Goubard, David

Patent Trials and Appeals Board

Jun 8, 2020

2019004096 (P.T.A.B. Jun. 8, 2020)

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.
14/384,862 09/12/2014 David Goubard BOSTIK-0044 2986
23599 7590 06/08/2020
MILLEN, WHITE, ZELANO & BRANIGAN, P.C.
2200 CLARENDON BLVD.
SUITE 1400
ARLINGTON, VA 22201
EXAMINER
VAZQUEZ, ELAINE M
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
06/08/2020 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):
docketing@mwzb.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAVID GOUBARD

Appeal 2019-004096
Application 14/384,862
Technology Center 1700
____________

Before ROMULO H. DELMENDO, JAMES C. HOUSEL, and
BRIAN D. RANGE, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
The Appellant1 appeals under 35 U.S.C. § 134(a) from the Primary
Examiner’s final decision to reject claims 11–13 and 20–24.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies “BOSTIK SA, a wholly owned
subsidiary of ARKEMA France,” as the real party in interest (Appeal Brief
filed December 13, 2018 (“Appeal Br.”) at 1).
2 See Appeal Br. 2–9; Reply Brief filed April 22, 2019 (“Reply Br.”) at 1–2;
Final Office Action entered June 1, 2018 (“Final Act.”) at 2–9; Examiner’s
Answer entered February 21, 2019 (“Ans.”) at 3–9.
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Application 14/384,862

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I. BACKGROUND
The subject matter on appeal relates to a breathable self-adhesive
article comprising at least one breathable substrate coated with a breathable
adhesive layer (Specification filed September 12, 2014 (“Spec.”) at 1, ll. 6–
8). Representative claim 11, the sole independent claim on appeal, is
reproduced from the Claims Appendix to the Appeal Brief, as follows:
11. A self-adhesive article comprising:
a substrate having a Moisture-Vapour Transmission Rate
superior or equal to 1000 g/m2/24h, wherein at least one face of
said substrate is coated with an adhesive layer obtained by
curing an adhesive composition comprising at least one silyl-
containing polymer, at least one compatible tackifying resin
and at least one catalyst,
said adhesive layer having a Moisture-Vapour
Transmission Rate superior or equal to 300 g/m2/24h for a
coating weight below 50 g/m2 and a Moisture-Vapour
Transmission Rate superior or equal to 100 g/m2/24h for a
coating weight superior or equal to 50 g/m2.
(Appeal Br. 10 (emphasis added)).
II. REJECTIONS ON APPEAL
The claims stand rejected under pre-AIA 35 U.S.C. § 103(a), as
follows:
A. Claims 11–13, 20, 21, and 24 as unpatentable over Simpson et
al.3 (“Simpson”) in view of Poivet et al.4 (“Poivet” or “Poivet
’699”); and

3 US 2010/0286582 A1, published November 11, 2010.
4 WO 2009/106699 A2, published September 3, 2009. The Examiner relies
on the corresponding United States published application (Poivet et al., US
2011/0052912 A1, published March 3, 2011 (“Poivet ’912”)) as an English
language translation. Therefore, we also cite to Poivet ’912.
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Application 14/384,862

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B. Claims 11–13 and 20–23 as unpatentable over Simpson in view
of Griswold.5
(Ans. 3–9; Final Act. 2–9).
III. DISCUSSION
Rejection A. The Examiner finds that Simpson describes a self-
adhesive article comprising a substrate having a moisture-vapor transmission
rate of at least about 500 g/m2/day and an adhesive layer on one face of the
substrate (Ans. 3; Final Act. 2–3). The Examiner acknowledges that
Simpson does not disclose “an adhesive layer obtained by curing an
adhesive composition comprising at least one silyl-containing polymer, at
least one compatible tackifying resin and at least one catalyst” having the
specified moisture-vapor transmission rate characteristics, as recited in claim
11 (Ans. 3; Final Act. 3). The Examiner finds, however, that the Appellant
“admits that the adhesive composition (of the instant invention) is of the
type described in [Poivet ’699]” (Ans. 3; Final Act. 3). Based on these
findings, the Examiner concludes that “[i]t would have been obvious to one
of ordinary skill in the art . . . to have used the adhesive of Poivet as the
adhesive in Simpson in order for the adhesive bandage to retain its required
cohesion over a wide temperature range” (Ans. 4; Final Act. 4). Regarding
the adhesive layer’s moisture-vapor transmission rate characteristics recited
in claim 11, the Examiner states that “it is implicit” that Poivet’s adhesive
layer has the same characteristics recited in the claim in view of the
“admission” in the Appellant’s Specification (Ans. 4; Final Act. 4).

5 US 2008/0058492 A1, published March 6, 2008.
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Application 14/384,862

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The Appellant contends, inter alia, that the Examiner’s rejection is
based on an impermissible use of the Appellant’s own Specification to
support a conclusion that a person having ordinary skill in the art would
have combined Simpson with Poivet to arrive at claim 11’s subject matter
(Appeal Br. 2–6). For the reasons given below, we agree with the Appellant
that the Examiner’s rejection is not well-founded.
Simpson describes a breathable bandage having superhydrophobic
particles (e.g., porous diatomaceous earth particles) attached to a surface
thereof to prevent water from penetrating from the exterior to the interior of
the bandage, while allowing vapor to escape through the bandage (Simpson
¶¶ 5, 19, 24). According to Simpson, the superhydrophobic particles are
attached to the substrate by forming a mixture of the particles and an
adhesive and then applying the mixture to a surface of the bandage substrate
(id. ¶ 12). Simpson discloses various adhesive binders such as
polypropylene, polystyrene, polyacrylate, cyanoacrylates, and amorphous
fluoropolymer (id. ¶ 27), but Simpson does not teach an adhesive layer cured
from an adhesive composition comprising at least one silyl-containing
polymer, at least one tackifier, and at least one catalyst curing agent, wherein
the adhesive layer has the specified moisture-vapor transmission rate
characteristics, as recited in claim 11.
Poivet does teach the same adhesive composition disclosed as suitable
for making the claimed self-adhesive article (Poivet ’912 Abstract; Spec. 7,
l. 21–8, l. 14). According to Poivet, the adhesive composition is suitable for
making self-adhesive labels and/or tapes (id. ¶ 1). Poivet teaches that the
adhesive provides improved adhesive strength and tack properties and
retains a required cohesion over a wide temperature range (id. ¶ 14).
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But, as the Appellant argues (Appeal Br. 2–4), Poivet provides no
indication or suggestion that its disclosed adhesive composition would meet
the requirements described in Simpson, which is a breathable bandage that
prevents liquid water from penetrating, while allowing water vapor to
escape. Absent the impermissible use of the Appellant’s own Specification,
the Examiner’s findings, analysis, and conclusion lack some rational
underpinning or evidentiary basis that would explain why a person having
ordinary skill in the art would have been motivated or prompted to select
Poivet’s adhesive composition from a virtually infinite genus of adhesive
compositions to make Simpson’s self-adhesive article. In re Jones, 958 F.2d
347, 150–51 (Fed. Cir. 1992).
Accordingly, we do not sustain the Examiner’s rejection as
maintained against independent claim 11 and all other dependent claims
subject to this rejection.
Rejection B. The Examiner relies on Griswold, which discloses an
adhesive that appears to fall within the scope of claim 11, in a manner that is
cumulative to reliance on Poivet (Ans. 5–6; Final Act. 4–6 (citing Griswold
Abstract, ¶ 48)). Griswold teaches that, in certain embodiments, other
adhesives may be suitable for “adhesion against skin and modification of
drug delivery rates” (Griswold ¶ 47). The Examiner, however, makes no
attempt to show that such adhesives would meet Simpson’s requirements.
Thus, for reasons similar to those in our discussion of Rejection A above, we
hold that the Examiner’s rejection over Simpson and Griswold is also flawed
as it is based on an impermissible use of the Appellant’s own Specification.

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Application 14/384,862

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IV. CONCLUSION
In summary:

Claims
Rejected
35 U.S.C.
§
References/Basis Affirmed Reversed
11–13, 20,
21, 24
103(a) Simpson, Poivet
’699 (Poivet
’912)
11–13, 20,
21, 24
11–13, 20–
23
103(a) Simpson,
Griswold
11–13, 20–
23
Overall
Outcome
11–13, 20–
24

REVERSED