Ex Parte ZHANG et al

Patent Trial and Appeal Board

Jun 21, 2018

13077530 (P.T.A.B. Jun. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/077,530 03/31/2011
50787 7590 06/21/2018
STRADLEY RONON STEVENS & YOUNG, LLP
30 VALLEY STREAM PARKWAY
GREAT VALLEY CORPORA TE CENTER
MALVERN, PA 19355-1481
Sheng ZHANG
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.
184714-3028 5734
EXAMINER
MATTISON, LORI K
ART UNIT PAPER NUMBER
1619
MAILDATE DELIVERY MODE
06/21/2018 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 SHENG ZHANG and RAFAEL RUIZ SR.
Appeal2017-008848
Application 13/077,530 1
Technology Center 1600
Before DONALD E. ADAMS, JOHN E. SCHNEIDER, and
DAVID COTTA, Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
DECISION ON APPEAL
This Appeal under 35 U.S.C. § 134(a) involves claims 1--4, 12, 13,
31-34, and 41--49 (Final Act. 2 2; Reply Br. 2). Examiner entered rejections
under 35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants identify "Adhezion Biomedical, LLC" as the real party in
interest (App. Br. 1 ).
2 Office Action mailed February 11, 2016.
Appeal2017-008848
Application 13/077,530
STATEMENT OF THE CASE
Appellants' disclosure relates "to adhesive compositions for use in
bonding keratin-based materials such as hair and eyelashes" (Spec. i-f 1 ).
Appellants' independent claims 1 and 41 are representative and reproduced
below:
1. An adhesive composition, comprising a mixture of: a
cyanoacrylate monomer selected from the group consisting of
2-octyl cyanoacrylate monomer, n-butyl cyanoacrylate
monomer, and a mixture of 2-octyl cyanoacrylate monomer and
n-butyl cyanoacrylate monomer, about 200 to about 15,000
parts per million (ppm) of butylated hydroxyl anisole and about
10 ppm to about 200 ppm of sulfur dioxide, an organic polymer
thickening agent comprising a partial polymer of 2-octyl
cyanoacrylate, about 0.8% to 7% by weight of untreated fumed
silica, and about 0.02% to 0.5% by weight of 18-crown-6 crown
ether, wherein the composition has a viscosity of from about
100,000 to about 500,000 centipoise (cps).
(App. Br. 25 (emphasis added).)
41. An adhesive composition, comprising: a mixture of n-butyl
cyanoacrylate monomer, about 200 to about 15,000 parts per
million (ppm) ofbutylated hydroxyl anisole, about 10 ppm to
about 200 ppm of sulfur dioxide, 2-octyl cyanoacrylate partial
polymer; from about 0.8 to about 7.0% by weight of untreated
fumed silica; from about 0.02% to about 0.5% by weight of 18-
crown-6 crown ether; and from about 0.02 % to about 1 % of
carbon black, wherein the composition has a viscosity of from
about 100,000 to about 500,000 centipoise (cps).
(Id. at 26 (emphasis added).)
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Appeal2017-008848
Application 13/077,530
Appellants' claims stand rejected as follows:
Claims 1--4, 31-33, 43, and 44 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Askill, 3 Mclntire, 4 and
Hiraiwa. 5
Claims 1--4, 31-34, 41--44, and 47--49 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Askill, Mcintire, and
Hiraiwa, and Leung. 6
Claims 1--4, 12, 13, 31-33, 43, and 44 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Askill, Mcintire, and
Hiraiwa, and Patterson. 7
Claims 1--4, 31-34, and 41--49 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Askill, Mcintire, and
Hiraiwa, Leung, and Patterson.
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
ANALYSIS
The adhesive composition of Appellants' claimed invention
comprises, inter alia, 18-crown-6 crown ether.
Examiner finds that Askill discloses an adhesive composition that
comprises "polyethylene glycol (PEG) esters and capped PEG esters or
ethers as suitable biocompatible plasticizers," but does not comprise, inter
3 Askill et al., US 2005/0042196 Al, published Feb. 24, 2005.
4 Hiraiwa et al., US 4,980,086, issued Dec. 25, 1990.
5 Mcintire et al., US 3,654,239, issued Apr. 4, 1972.
6 Leung et al., US 6,010,714, issued Jan. 4, 2000.
7 Patterson et al., US 2005/0025707 Al, published Feb. 3, 2005.
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Application 13/077,530
alia, 18-crown-6 crown ether (Final Act. 3---6). Examiner, therefore, relies
on Hiraiwa to suggest adhesive compositions that may comprise 18-crown-6
crown ether (see id. at 6-7).
Hiraiwa discloses "a curable composition in which a powder of an
organic or inorganic compound is added and dispersed in 2-cyanoacrylic
acid ester and an acidic substance and a basic substance are contained as a
stabilizer" (Hiraiwa 2:46-50). Hiraiwa discloses that polyethylene glycol
and crown ethers, including 18-crown-6 crown ether may be used as the
basic substance in the stabilizer of Hiraiwa' s composition (id. 7 :23--4 7; see
also id. at 9: 1-2 (Hiraiwa's most preferred basic substances include "18-
crown-6 [crown ether and] polyethylene glycol")). Thus, as Appellants
explain, "Hiraiwa describes crown ethers ... and polyalkylene glycols ... as
capable of serving as the 'basic substance' that makes up one half of
[Hiraiwa's] stabilizer (the requisite 'acidic substance' being the other half of
the stabilizer)" (App. Br. 8).
Nevertheless, Examiner asserts that Hiraiwa discloses "PEG and 18-
crown-6 [crown] ether to be among the most preferred basic substances
which are electron donors that improve the curing rate of 2-cyanoacrylate
adhesives" (Ans. 5). We are not persuaded. As Appellants explain:
Even if the skilled artisan would have been motivated to
substitute [Hiraiwa's] 18-crown-6 crown ether for [Askill's]
polyethylene glycol as a "basic substance" for purposes of
stabilizing the cyanoacrylate monomers, per the teachings of
Hiraiwa, the skilled artisan would also require a motivation to
include an "acidic substance" to achieve this stabilizing
function. But no such motivation has been advanced, and
Askill does not describe the inclusion of an "acidic substance"
generally, and does not describe the inclusion of any of the
specific "acidic substances" described by Hiraiwa as the
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Application 13/077,530
necessary partner to the basic substance to carry out the
stabilizing effect.
(App. Br. 8-9.) We agree. In addition, we agree with Appellants'
contention that "Hiraiwa does not teach or suggest that polyethylene glycol
is a bonding accelerator, [or] ... that 18-crown-6 crown ether and
polyethylene glycol are functionally equivalent as bonding accelerators" (id.
at 8; see also id. at 9 ("Neither Hiraiwa nor any of the other cited references
teaches or suggests that polyethylene glycol is a bonding accelerator,
equivalent to 18-crown-6 crown ether for this purpose and used in the
absence of a companion acidic substance"); cf Ans. 5---6).
Examiner relies on Mcintire to disclose the preparation of poly(alpha-
cyanoacrylates ), their use as a viscosity modifier and as adhesives in surgical
applications (Final Act. 7-8). Examiner, however, fails to establish that
Mcintire makes up for the deficiency in the combination of Askill and
Hiraiwa discussed above, i.e., the lack of an evidentiary basis on this record
to support Examiner's proposed substitution of Askill's polyethylene glycol
with Hiraiwa's 18-crown-6 crown ether.
Therefore, we are not persuaded by Examiner's conclusion based on
the combination of Askill, Hiraiwa, and Mcintire that, at the time
Appellants' invention was made, it would have been prima facie obvious to,
inter alia, substitute Askill's polyethylene glycol with Hiraiwa's 18-crown-6
ether, because "polyethylene glycol and 18-crown-6 ether are reasonably
functionally equivalent acidic substances which improve curing rate of
cyanoacrylate adhesives and have the unexpected benefit of stably
dispersing inorganic powders in 2-cyanoacrylate" (see Final Act. 8-9
(emphasis added); cf Hiraiwa 7 :23--4 7 (polyethylene glycol and 8-crown-6
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Application 13/077,530
crown ether are basic substances in Hiraiwa's composition); see also id. at
9:1-2).
Examiner finds that the combination of Askill, Hiraiwa, and Mcintire
fails to disclose a composition comprising "about 0.02 to about 1 % carbon
black" and relies on Leung to make up for this deficiency (Final Act. 13-
14 ). Examiner further finds that the combination of Askill, Hiraiwa, and
Mcintire, with or without Leung, fails to disclose the surface area of fumed
silica and relies on Patterson to make up for this deficiency (Final Act. 15-
17). Examiner, however, failed to establish an evidentiary basis on this
record to support a conclusion that Leung or Patterson alone, or in
combination, make up for the deficiencies in the combination of Askill,
Hiraiwa, and Mcintire discussed above.
CONCLUSION
The preponderance of evidence relied upon by Examiner fails to
support a conclusion of obviousness.
The rejection of claims 1--4, 31-33, 43, and 44 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Askill, Mcintire, and
Hiraiwa is reversed.
The rejection of claims 1--4, 31-34, 41--44, and 47--49 under 35
U.S.C. § 103(a) as unpatentable over the combination of Askill, Mcintire,
and Hiraiwa, and Leung is reversed.
The rejection of claims 1--4, 12, 13, 31-33, 43, and 44 under 35
U.S.C. § 103(a) as unpatentable over the combination of Askill, Mcintire,
and Hiraiwa, and Patterson is reversed.
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Application 13/077,530
The rejection of claims 1--4, 31-34, and 41--49 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Askill, Mcintire, and
Hiraiwa, Leung, and Patterson is reversed.
REVERSED
7