Ex Parte Wibaux et al

Patent Trial and Appeal Board

Jul 13, 2018

14128658 (P.T.A.B. Jul. 13, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/128,658 12/23/2013
81029 7590 07/17/2018
A very Dennison Corporation
Brian G. Bembenick
8080 Norton Parkway, 22D
Mentor, OH 44060
FIRST NAMED INVENTOR
Anne Marie Wibaux
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.
5353-US; AD2013003659 8688
EXAMINER
YU,HONG
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
07/17/2018 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):
patentdocket@averydennison.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANNE MARIE WIBAUX and VICKY VAN DE POL 1
Appeal2017-007482
Application 14/128,658
Technology Center 1600
Before JEFFREYN. FREDMAN, RYAN H. FLAX, and DAVID COTTA,
Administrative Patent Judges.
FLAX, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) involving
claims to a composition comprising, inter alia, vegetable oil and adhesive. 2
The Examiner's rejections of claims 1 and 13-15 under 35 U.S.C. § 102(b)
and§ 103(a) are appealed. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The Real Party in Interest is identified as "A very Dennison Corporation."
Br. 3.
2 We have considered and herein refer to the Specification of Dec. 23, 2013
("Spec."); Final Office Action of Oct. 8, 2015 ("Final Action"); Appeal
Brief of Mar. 22, 2016 ("Br."); and Examiner's Answer of Sept. 21, 2016
("Answer"). No Reply Brief was submitted.
Appeal2017-007482
Application 14/128,658
STATEMENT OF THE CASE
The Specification states:
The present subject matter relates to adhesives and/or
hydrocolloid compositions that comprise one or more vegetable
oils. The resulting compositions provide a soothing effect when
applied to skin and may further provide anti-infective properties.
The vegetable oil containing compositions also assist healing of
wounds or other tissue damage by promoting the formation of
scar tissue. This characteristic is known as cicatrisation. The
incorporation of vegetable oil has also been found to provide a
plasticizing effect upon the resulting compositions.
Spec. ,r 14.
Independent claim 1, reproduced below, is representative:
1. A composition comprising, by weight:
from about 0.1 % to about 20% of at least one vegetable
oil·
'
from about 37 .5% to about 60% of hot melt adhesive
containing styrene-isoprene-styrene and styrene-isoprene block
copolymers;
from about 30% to 35% of one or more hydrocolloids; and
from about 0% to 17 .5% polyisobutene.
Br. 13 (Claims App'x).
The following rejections are appealed:
Claims 1, 14, and 15 stand rejected under 35 U.S.C. § I02(b) as
anticipated by Auguste3 (as evidenced by Kraton). 4 Final Action 3.
3 US 6,375,977 Bl (issued Apr. 23, 2002) ("Auguste").
4 Kraton, Product Families, Kraton® D SIS,
http://www.kraton.com/products/kraton_d_sis.php (no access or print date is
provided on document) ("Kraton").
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Application 14/128,658
Claims 1, 14, and 15 stand rejected under 35 U.S.C. § I03(a) as
obvious over Auguste (as evidenced by Kraton). Id. at 5.
Claim 13 stands rejected under 35 U.S.C. § I03(a) as obvious over
Auguste (as evidenced by Kraton) and Kutsukake. 5 Id. at 7.
DISCUSSION
Only those arguments made by Appellants in the Appeal Brief have
been considered in this Decision (no Reply Brief was submitted); arguments
not so presented in the Brief are waived. See 3 7 C.F .R. § 41.3 7 ( c )(1 )(iv)
(2015); see also Ex parte Borden, 93 USPQ2d 14 73, 14 7 4 (BP AI 2010)
(informative) ("Any bases for asserting error, whether factual or legal, that
are not raised in the principal brief are waived."). Statements in a brief that
"merely mention [a] claim ... and lack any type of separate, substantive
argument concerning the claim" are not sufficient to constitute separate
argument regarding that claim under 37 C.F.R. § 4I.37(c)(l)(iv). In re Kao,
639 F.3d 1057, 1065 (Fed. Cir. 2011).
"[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting aprimafacie case ofunpatentability. If
that burden is met, the burden of coming forward with evidence or argument
shifts to the applicant." In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
"Anticipation requires that all of the claim elements and their
limitations are shown in a single prior art reference." In re Skvorecz, 580
F.3d 1262, 1266 (Fed. Cir. 2009). Regarding obviousness, "[t]he
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results." KSR Int 'l Co.
5 US 2011/0130698 Al (pub. June 2, 2011) ("Kutsukake").
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Application 14/128,658
v. Teleflex Inc., 550 U.S. 398,416 (2007). "[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." Id. at 418. "In
determining whether the subject matter of a patent claim is obvious, neither
the particular motivation nor the avowed purpose of the patentee controls.
What matters is the objective reach of the claim. If the claim extends to
what is obvious, it is invalid under§ 103." Id. at 419.
The Examiner determined that claims 1, 14, and 15 are anticipated by
and, in the alternative, would have been obvious over Auguste (as evidenced
by Kraton), as respectively indicated in the Final Action and Answer. Final
Action 3-7 and Answer 2---6 (collectively citing Auguste in its entirety, but
specifically at Abstract, 4:25-5:53, 6:25-30, 7:53---67, claims 1, 2, 21).
These rejections are based, in part, on the Examiner's interpretation of
the claim language "from about 37 .5% to about 60% of hot melt adhesive,"
particularly the broadening term "about" as it applies to the 37.5% low-end
of this claimed range. The Examiner determined ( and Appellants do not
contest) that Auguste taught "10 to 35% by weight of an adhesive
poly(styrene/isoprene/styrene" where the reference disclosed, for example,
"for adhesive matrices based solely on poly (styrene/olefin/styrene) block
copolymers, a hydrocolloid adhesive mass is recommended which
comprises: a) 10 to 35 parts by weight of a poly(styrene/isoprene/styrene)
three-block copolymer." See Final Action 3 (citing Auguste 7:53---67, claims
1, 2, and 21 ). The Examiner further determined that the claimed "about
3 7 .5%" was not specifically defined in Appellants' Specification ( or claims),
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Application 14/128,658
but that the term (based on its ordinary meaning) encompasses within its
scope Auguste's disclosed 35% because the broadest reasonable
interpretation of "about" (e.g., near, close to, approximate) includes a
deviation of, for example, 10% ( or more), thereby extending the claim scope
beyond Auguste's disclosed 35% hot melt adhesive. Answer 2-3, 6.
As for claim 13, which claims a group of vegetable oils from which
the claimed vegetable oil is to be selected, the Examiner determined that the
claim would have been obvious over Auguste, as applied in connection with
the§§ 102 and 103 rejections of claim 1, in combination with Kutsukake,
which discloses claimed vegetable oils for such a use. Final Action 7-8.
We discern no error in the Examiner's determinations, including the
interpretation of the "about 3 7. 5 %" claim language, and adopt the
Examiner's findings of fact as set forth in the Final Office Action and
Answer. See Final Action 3-8; Answer 2---6. We address Appellants'
arguments below.
Appellants argue that "Auguste et al. as evidenced by Kraton D SIS,
teaches a composition comprising from 10 to 35% by weight of an adhesive
poly (styrene/isoprene/styrene )," which "is clearly not the range claimed by
claim 1," and disagree that 35% can be considered about 37.5% as claimed.
Appeal Br. 10. Therefore, Appellants argue, the claims are not anticipated
by Auguste.
Appellants' argument is a dispute over the Examiner's claim
interpretation of the "about 37.5%" claim language. Appellants' argument is
not persuasive because the Examiner's interpretation is the broadest
reasonable interpretation of this claim language. "Such broadening usages
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Application 14/128,658
as 'about' must be given reasonable scope; they must be viewed by the
decisionmaker as they would be understood by persons experienced in the
field of the invention. Although it is rarely feasible to attach a precise limit
to 'about,' the usage can usually be understood in light of the technology
embodied in the invention." Modine Manufacturing Co. v. US. ITC, 75
F.3d 1545, 1554 (Fed. Cir. 1996). The Examiner has made a reasonable
interpretation of the disputed "about 3 7. 5 %" claim language based on its
ordinary meaning; Appellants have not persuasively argued or provided
persuasive evidence to the contrary.
"[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification." In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000); see also Cuozzo Speed Tech., LLC v. Lee,
136 S. Ct. 2131, 2145 (2016). The Specification states "[p]referably, in
certain versions the compositions comprise ... from about 35% to about
80% of one or more hot melt adhesives .... " Spec. ,r 41. The Specification
then goes on to state "preferred compositions comprise ... from about
37.5% to about 60% of hot melt adhesive(s) containing styrene-isoprene-
styrene and styrene-isoprene block copolymers .... " Id. Thus, the
Specification contemplates a broad range of the amount of adhesive
provided for the composition, including the intrinsically flexible "about
37.5%" claimed. The Specification does not explicitly clarify how broadly
the term "about" is defined in this context. The Specification also describes
several exemplary formulations within the scope of the claims having
various percentage amounts of adhesive, including exactly 37 .5% and more,
but these examples do not indicate what a reasonable interpretation of "about
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37.5%" must be. See id. ,r,r 44--56. The claims, as originally filed and as
pending on appeal, are equally uninformative as to the breadth and ultimate
flexibility of the claim term "about 37.5%." What is clear is that the claim
limitation does not require exactly 37 .5%. "[C]laims are interpreted with an
eye toward giving effect to all terms in the claim." Bicon, Inc. v. Straumann
Co., 441 F.3d 945, 950 (Fed. Cir. 2006). Here, the claim includes the term
"about" to expand the scope of the claim.
As discussed above, the Examiner has determined that the claim term
"about 37.5%" includes a deviation of 10% (or more) and, therefore, extends
to and beyond Auguste's disclosed 35% hot melt adhesive. Final Action 3-
4; Answer 2-3. Appellants' only response to this is that they "respectfully
disagree," without providing any substantive explanation why the claim term
"about 37.5%" does not include a 10% or greater deviation flexibility or why
the Examiner's interpretation would be incorrect in the opinion of one of
ordinary skill in the art. In truth, here the flexibility invoked by the
broadening term "about" need not be as great as the 10% the Examiner's
interpretation affords because the difference between Auguste's disclosed
35% hot melt adhesive amount and a 37.5% amount is just 2.5, which is less
than a 7% deviation.
We conclude the Examiner's claim interpretation is reasonable, at
least as to its lower-end deviation values, and constitutes the broadest
reasonable interpretation of the disputed claim language. We also conclude
the disputed claim language is broad enough to include within its scope
Auguste's disclosed 35% hot melt adhesive amount, which is a mere 6.7%
deviation from 37.5% and within the flex provided by ordinary meaning of
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the broadening term "about." Therefore, for the reasons above, we affirm
the anticipation rejection.
Appellants also argue the Examiner has not made a prima facie case
for the obviousness of claim 1, considering the percentage of adhesive
limitation discussed above, because the range of adhesive claimed and that
disclosed in the Auguste do not overlap. Appeal Br. 11 (citing In re Patel,
566 F. App'x 1005 (Fed. Cir. 2014)). Appellants argue the Examiner has
not evidentiarily supported the determination that the claim term "about," as
applied to the percentage of adhesive, can be interpreted to include a
variance of 10-30% and contend that the skilled artisan would not interpret
the term that way. Id.
This argument is not persuasive. We disagree with Appellants'
argument for the reasons discussed above regarding the anticipation
rejection and the disputed claim language; the Examiner's interpretation of
"about" applies its ordinary meaning. However, in an obviousness analysis,
as noted above, "the 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." KSR, 550 U.S. at 418. "What matters is the
objective reach of the claim. If the claim extends to what is obvious, it is
invalid under§ 103." Id. at 419.
Relevant here, our reviewing court's holding in Brandt teaches the
"nonbinding holding in Patel, however, does not stand for the proposition
advanced by Appellants that a claimed range and prior art range must
overlap for an examiner to find a primafacie case." In re Brandt, 886 F.3d
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Application 14/128,658
1171, 1177 (Fed. Cir. 2018). Brandt explains that "Patel recognized,
however, that prima facie rejections may be appropriate 'where there is a
teaching in the prior art that the end points of the prior art range are
approximate, or can be flexibly applied."' Id.
Here, the endpoint of claim 1 is expressly approximate, stating "about
37.5%." Also, as in Brandt, "Appellants do not contest the factual closeness
of the two ranges." Id. Nor do Appellants provide any evidence sufficient
to rebut the Examiner's implicit finding that even if the ranges of Auguste
and claim 1 do not overlap, the ranges "are close enough such that one
skilled in the art would have expected them to have the same properties"
Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 783 (Fed. Cir.
1985). Therefore, we agree with the Examiner's obviousness analysis
because the ordinary artisan, reasonably expecting the adjacent/overlapping
range points of "35%" and "about 37.5%" to share the same properties,
would have found the "percentage of adhesive in a hydrocolloid adhesive
composition ... a result effective parameter that a person of ordinary skill in
the art would routinely optimize." Answer 5.
"[A] reference is not limited to the disclosure of specific working
examples." In re Mills, 470 F.2d 649, 651 (CCPA 1972)). "A reference can
be used for all it realistically teaches, and is not limited to the disclosures in
its specific illustrative examples." In re Chapman, 357 F.2d 418,424
( CCP A 1966). As the Examiner has determined, Auguste not only discloses
an example having 10-35% poly(styrene/isoprene/styrene), but the reference
also more broadly discloses compositions having 32-120 parts by weight of
an adhesive matrix. See Final Action 3 and Answer 3--4 ( citing Auguste
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Abstract, claims 1, 2, 21 ); see also Auguste 3: 6-21 ("the present invention
relates to a hydrocolloid adhesive mass useful especially for medical
purposes, characterized in that said hydrocolloid adhesive mass comprises
... 32 to 120 parts by weight of an adhesive matrix made up of one or more
polymers selected from poly(styrene/olefin/styrene) block copolymers").
Thus, Auguste suggests increasing the amount of adhesive, such as Kraton®
D SIS, above the specific lOo/o-35% example that is the focus of much of the
dispute on appeal. This supports the Examiner's determination that the
claims would have been obvious over Auguste.
Further, the Examiner determined that the percentage of adhesive as
claimed is a result effective variable, which would have been routinely
optimized by the skilled artisan. Final Action 6. This is evidenced by the
varying amounts of adhesive disclosed in the examples in Auguste ( as well
as the varying amounts disclosed in Appellants' Specification). See Auguste
columns 7-14; see also Spec. ,r,r 44--56. Appellants do not persuasively
refute the Examiner's determination and do not present evidence of
unexpected results supporting the non-obviousness of the claims. See
Appeal Br. 10-11 ( Appellants merely "respectfully disagree[]" with the
Examiner's determination).
For the reasons set forth above, we affirm the obviousness rejection of
claims 1, 14, and 15. Appellants do not present a separate argument
regarding the obviousness rejection of claim 13, therefore, we affirm it for
the same reasons.
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Application 14/128,658
SUMMARY
The anticipation rejection is affirmed.
The obviousness rejections are each 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 )(iv).
AFFIRMED
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