13170642 (P.T.A.B. Mar. 29, 2016)

Ex Parte Xie et al

Patent Trial and Appeal BoardMar 29, 2016

13170642 (P.T.A.B. Mar. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/170,642 06/28/2011 Tao Xie 104102 7590 03/30/2016 BrooksGroup 48685 Hayes Shelby Township, MI 48315 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. POOl 948-US-DIV-R&D-MJL 4204 EXAMINER FUNG, CHING-YIU ART UNIT PAPER NUMBER 1787 MAILDATE DELIVERY MODE 03/30/2016 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 TAO XIE, XINGCHENG XIAO, and RUOMIAO WANG Appeal2014-005199 Application 13/170,642 Technology Center 1700 Before TERRY J. OWENS, PETER F. KRATZ, and N. WHITNEY WILSON, Administrative Patent Judges. WILSON, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants 1 appeal under 35 U.S.C. Â§ 134(a) from the Examiner's Final Action mailed April 2, 2013 ("Final Act."), finally rejecting claims 1- 13 and 21. 2 We have jurisdiction over the appeal under 35 U.S.C. Â§ 6(b). We affirm. 1 According to Appellants, the real party in interest is General Motors LLC (Appeal Br. 1 ). 2 As discussed below, other claims were finally rejected in the Final Action, but those rejections are not before us. Appeal2014-005199 Application 13/170,642 CLAHvIED SUBJECT ivIATTER Appellants' invention is directed to a multilayer, dry adhesive (Spec. i-f 15). A first layer has a dry adhesive and a non-adhesive portion (Spec. i-f 17). A second layer includes a shape memory polymer capable of changing the shape of the multilayer thermo-reversible dry adhesive (Spec. i-f 15). The general structure is illustrated by the following annotated version of FIG. 4 from the Specification: FIG. 4 E:~-:~.t~Jn~ed~~ >3ryÂ· adh~-:::~;;,.:~~Â· ;~rÂ·p:~f : .~: An annotated version of FIG. 4 illustrates the stn.1cture of a product according the invention. The shape memory polymer is capable of thermally reversing adhesion of the adhesive to a substrate via heating (Spec. i-f 19). Details of the claimed invention are set forth in representative claim 1, which is reproduced below from the Claims Appendix of the Appeal Brief: 1. A product comprising: a multilayer thermo-reversible dry adhesive comprising: a first layer comprising a dry adhesive and a non- adhesive portion; and a second layer comprising a shape memory polymer disposed over said first layer and capable of changing the shape of the multilayer thermo-reversible dry adhesive and thermally reversing adhesion to a substrate via heating; 2 Appeal2014-005199 Application 13/170,642 wherein said first layer does not adhere to the substrate at the location of the non-adhesive portion. (App. Br., Claims App 'x, 20) REJECTIONS The Examiner notes that two rejections set forth in the Final Action have been withdrawn and are not on appeal. A third rejection identified in the Final Action (claims 3 and 8-10 under 35 U.S.C. Â§ 103(a) as being unpatentable over 0 'Mally3 in view of Holman, 4 and further in view of Beloshenko5) was not formally withdrawn in the Answer. However, the Examiner does not defend the rejection in the Answer and, given the formal withdrawal of the other rejections over O'Mally and Holman, it appears that the failure to withdraw this rejection was an oversight. Accordingly, we proceed as though that rejection was also withdrawn and is not before us. 6 Claims 1-2, 4--7, and 10 are rejected under 35 U.S.C. Â§ 102(b) as being anticipated by Browne. 7 3 O'Mally et al., U.S. Patent Pub. 2007/0240885 Al, published October 18, 2007. 4 Holman et al., U.S. Patent No. 6,991,639 B2, issued January 31, 2006. 5 Beloshenko et al., "Shape memory effect in the epoxy polymer- thermoexpanded graphite system," Composites: Part A 33 (2002), pp. 1001- 1006. 6 Even if the Examiner did not intend to withdrawn this rejection, because (a) the rejection of claims 3 and 8-10 (each of which depends ultimately from claim 1) relies on the Examiner's now-abandoned conclusion that claim 1 would have been obvious over O'Mally and Holman, and (b) the Examiner has not made any additional findings or conclusions in Rejection II that would address the apparent deficiencies in the rejection of claim 1 over O'Mally and Holman, we would reverse the obviousness rejection of claims 3 and 8-10 over O'Mally, Holman, and Beloshenko. 7 Browne et al., U.S. Patent Pub. 2005/0000065, published January 6, 2005. 3 Appeal2014-005199 Application 13/170,642 DISCUSSION _"A prior art reference anticipates a patent claim under 35 U.S.C. Â§ 102(b) if it discloses every claim limitation." In re Montgomery, 677 F.3d 1375, 1379 (Fed. Cir. 2012) (citing Verizon Servs. Corp. v. Cox Fibernet Va., Inc., 602 F.3d 1325, 1336-37 (Fed. Cir. 2010)). In this instance, Appellants contend that Browne does not disclose "a multi- layer thermo-reversible dry adhesive comprising: a first layer comprising a dry adhesive and a non-adhesive portion" as recited in independent claim 1 (Appeal Br. 6). Appellants specifically argue that Browne's hook-and-loop system is not an adhesive as required by claim 1 (id.) According to Appellants, Browne's hooks "engage" with the loops, but do not adhere to them (Appeal Br. 7). Therefore, according to Appellants, Browne does not anticipate claim 1. This argument is not persuasive. "[T]he PTO must give claims their broadest reasonable construction consistent with the specification .... Therefore, we look to the specification to see if it provides a definition for claim terms, but otherwise apply a broad interpretation." In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). In this instance, as noted by the Examiner (Ans. 5), the Specification does not define the word "adhesive" or the term "dry adhesive." (The Specification provides a detailed description of what it terms "Gecko footpads" and "Gecko adhesion" - which the Specification may consider to be examples of dry adhesives - but does not provide a definition of "adhesive" or "dry adhesive.") 4 Appeal2014-005199 Application 13/170,642 A definition of adhesive is "a substance that causes something to adhere,"8 while "adhere" may defined as "to stay attached; stick fast; cleave; cling."9 As explained by the Examiner (Ans. 5-7), Browne's hook and loop fastening system falls within this definition of adhesive, because it (the hook and loop fastening system) causes the two portions "to stay attached" to each other (i.e. to cleave and/or cling to each other). Appellants have not pointed to any section of the Specification which would exclude a hook and loop system (like that disclosed in Browne) from the definition of adhesive. Appellants argue that because Browne states that the hooks "engage" with the loops and does not state that the hooks "cleave" or "cling" to the loops, Brown's system cannot be considered to be an adhesive (Ans. 6-7). This argument is not persuasive because, inter alia, the definition of "adhesive" includes a substance that causes something to remain attached. Browne's system falls within this definition. Accordingly, Appellants have not shown error in the anticipation rejection over Browne. 10 8 Dictionary.com, http://www.dictionary.com/browse/adhesive?s=t 9 Dictionary.com, http://www.dictionary.com/browse/adhere. 10 In the Reply Brief, Appellants makes two arguments which were not raised in the Appeal Brief: (1) Brown's hook and loop system does not have "a non- adhesive portion" as recited in claim 1 (Reply Br. 4), and (2) the Examiner has not adequately explained how the hook elements 22 in Browne's system meet the claim limitation "a second layer comprising a shape memory polymer disposed over said first layer and capable of changing the shape of the multilayer thermo-reversible dry adhesive and thermally reversing adhesion to a substrate via heating." Neither of these arguments was raised in the Appeal Brief (see, Appeal Br. 6-7). We take no position on the merits of these arguments, but consider them waived because they are not responsive to points raised in the Examiner's Answer. 3 7 C.F .R. Â§ 41.41(g). See also, Ex parte Borden, 93 USPQ2d 1473, 1476-77 (BPAI 5 Appeal2014-005199 Application 13/170,642 CONCLUSION We AFFIRM the rejection of claims 1-2, 4--7, and 10 under 35 U.S.C. Â§ 102(b) as being anticipated by Browne. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). See 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 2010) (informative). If prosecution continues, Appellants may raise these arguments with the Examiner. 6