H.B. FULLER COMPANY

Patent Trials and Appeals Board

Sep 29, 2020

14290514 - (D) (P.T.A.B. Sep. 29, 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.
14/290,514 05/29/2014 Peter REMMERS AT-011-1-US-01 7971
27091 7590 09/29/2020
H.B. FULLER COMPANY
Patent Department
1200 WILLOW LAKE BLVD.
P.O. BOX 64683
ST. PAUL, MN 55164-0683
EXAMINER
CLEVELAND, MICHAEL B
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
09/29/2020 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):
julie.post@hbfuller.com
patent.dept@hbfuller.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER REMMERS, NICHOLAS PORRO,
NICHOLAS TAYLOR, and DIRK LAUKIEN
Appeal 2020-000080
Application 14/290,514
Technology Center 1700
Before LINDA M. GAUDETTE, N. WHITNEY WILSON, and
BRIAN D. RANGE, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL1
The Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 10–13, 15, 16, 18, 19, and 21–23.3

1 This Decision includes citations to the following documents: Specification
filed May 29, 2014 (“Spec.”); Final Office Action dated March 30, 2018
(“Final”); Appeal Brief (“Appeal Br.”) and Claims Appendix (“Claims
App.”) filed August 6, 2018; Examiner’s Answer dated February 11, 2019
(“Ans.”); and Reply Brief filed April 11, 2019 (“Reply Br.”).
2 We use the word Appellant to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as H.B.
Fuller Company. Appeal Br. 3.
3 We have jurisdiction under 35 U.S.C. § 6(b). A telephonic hearing was
held on September 24, 2020.
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We AFFIRM.
CLAIMED SUBJECT MATTER
Hot-melt pressure sensitive adhesives are adhesives that form a bond,
typically at room temperature, when pressure is applied to attach the
adhesives to the adhering substrates. Spec. 2:27–3:2. “Pressure sensitive
adhesives have a tendency to fuse together at room temperature . . . lead[ing]
to agglomeration of the pressure sensitive adhesive during normal handling.”
Id. at 3:2–3. “To prevent hot-melt adhesive compositions from
agglomerating prior to their intended use, [the] adhesive compositions are
typically provided in a packaged form. Packaged hot-melt adhesives are
typically composed of a base polymer, a tackifying agent and a wax
component.” Id. at 2:1–3. According to the Specification, anti-blocking
powders used in the discharge of hot-melts to avoid agglomeration tend to
become completely absorbed over time by the hot-melt and, as a result, the
residual tack reappears. Id. at 2:21–23. Agglomeration of packaged hot-melt
adhesives may prevent removal of individual forms from a storage container
or may prevent an automatic or semi-automatic processing of the individual
forms. Id. at 2:12–15.
According to the Specification, the present invention provides an
improved “packaged hot-melt adhesive compris[ing] a coextrusion
coating . . . [that] provides for the anti-blocking properties of the packaged
hot-melt adhesive.” Spec. 27:7–8. Claim 10, reproduced below, is
illustrative of the claimed subject matter:
10. A method of providing molten adhesive comprising:
providing a plurality of individual forms of hot melt
pressure sensitive adhesive wherein the individual forms of the
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hot melt pressure sensitive adhesive are completely covered by
a coextrusion coating;
the hot melt pressure sensitive adhesive portion of the
individual forms having an average penetration number (PZ),
which is between about 20 and about 70, the hot melt pressure
sensitive adhesive portion of the individual forms further
comprising:
from about 10 wt% to about 60 wt% of a metallocene or
single site catalyzed propylene polymer, between about 15 wt%
and about 60 wt% of a tackifying agent, and a plasticizer;
conveying the plurality of individual forms to a melting
system;
heating the plurality of individual forms until they
become a molten adhesive; and
applying the molten adhesive to a substrate.
Claims App. i.
REFERENCES
The Examiner relies on the following prior art as evidence of
unpatentability:
Name Reference Date
Sayovitz US 2003/0116259 A1 June 26, 2003
Rodriguez

US 2010/0305259 A1 Dec. 2, 2010
Burgsmueller

US 2013/0143997 A1 June 6, 2013
Podevyn US 2014/0311872 A1 Oct. 23, 2014
REJECTIONS
1. Claims 10–12, 15, 16, 19, 22, and 23 are rejected under
35 U.S.C. § 103 as unpatentable over Burgsmueller in view of Rodriguez.
Final Act. 3.
2. Claim 13 is rejected under 35 U.S.C. § 103 as unpatentable
over Burgsmueller in view of Rodriguez and Podevyn. Final Act. 6.
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3. Claims 18 and 21 are rejected under 35 U.S.C. § 103 as
unpatentable over Burgsmueller in view of Rodriguez and Sayovitz. Final
Act. 7.
OPINION
The Examiner found that Burgsmueller discloses or suggests the claim
10 method of providing an adhesive, except that Burgsmueller broadly
teaches that the hot-melt pressure-sensitive adhesive comprises a polyolefin
such as polypropylene, but does not specifically disclose that the
polypropylene is obtained from metallocene catalyst polymerization or
single site catalyzed polymerization. Final Act. 3–4 (citing, e.g.,
Burgsmueller Abstract); see Burgsmueller Abstract (“Hot melt adhesive
consisting of a core of a pressure sensitive adhesive comprising at least one
polymer selected from polyester, polyacrylate, polyolefin, polyurethane,
ethylene vinyl acetate polymers, styrene blockcopolymers or mixtures, at
least one tackifier and optionally additives”). The Examiner found that
Rodriguez discloses metallocene catalyst polymerization-derived propylene
copolymer-containing adhesive compositions that are useful in pressure
sensitive adhesive applications. Final Act. 4 (citing Rodriguez ¶ 14),
8 (citing Rodriguez ¶ 97). Based on Rodriguez’s disclosure, the Examiner
determined that the ordinary artisan would have substituted Burgsmueller’s
polyolefin with a metallocene catalyzed propylene polymer with a
reasonable expectation of successful results. Id. at 4, 8; see Rodriguez ¶ 14
(“In a preferred embodiment, the polyolefin polymer comprises a
metallocene catalyst polymerization derived copolymer of propylene and at
least one monomer.”). As to the “average penetration number (PZ)” of “the
hot melt pressure sensitive adhesive portion of the individual forms” (claim
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10), the Examiner found that because “Burgsmueller/Rodriguez disclose the
same hot melt PSA (metallocene catalyzed propylene adhesive), also in the
same form as claimed, and coextruded to have a polymeric shell . . . it would
also be expected to have a similar average penetration number as claimed”
(Final Act 4–5 (internal citations omitted)).
The Appellant’s arguments in support of patentability of all appealed
claims are based on claim 10’s limitations. See Appeal Br. 15. The Appellant
argues that Rodriguez does not cure Burgsmueller’s deficiencies, i.e.,
Burgsmueller’s failure to teach or suggest providing a hot melt pressure
sensitive adhesive comprising a metallocene or single site catalyzed
propylene polymer and having a needle penetration number between about
20 and about 70. See Appeal Br. 10–11. The Appellant’s arguments are not
persuasive of reversible error for the reasons explained by the Examiner in
the Answer. See Ans. 4–13. We add the following primarily to address the
arguments in the Reply Brief.
The Appellant contends that the Examiner’s statement in the Answer
that “it would have been obvious ‘to have substituted the polyolefin of
Burgsmueller with a specific polyolefin adhesive polymer (propylene
obtained from metallocene catalyzation) as taught by Rodriguez’” “reflects a
change in the basis of the rejection of claim 10.” Reply Br. 4–5 (quoting,
with added emphasis, Ans. 7). According to the Appellant, “[p]reviously, the
Examiner had taken the position that it would have been obvious to
substitute the adhesive of Rodriguez for the adhesive of Burgsmueller.” Id.
at 5 (emphasis in original) (citing Final Act. 3–4). The Appellant makes
arguments on pages 8–11 of the Reply Brief that are directed to this alleged
new rejection in the Answer.
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35 U.S.C. § 132(a) requires that the Director notify the applicant of
the rejection of claims, “stating the reasons for such rejection . . . together
with such information and references as may be useful in judging the
propriety of continuing the prosecution of [the] application.”
37 C.F.R. § 1.104(a)(2) states that this notification will be provided in an
Office Action. Section 132 and Rule 104 embody the basic concept of
procedural due process which requires an applicant at least be informed of
the broad statutory basis for rejecting applicant’s claims so that applicant
may determine what the issues are on which applicant can or should produce
evidence. In re Hughes, 345 F.2d 184, 185 (CCPA 1965); cf. In re Kronig,
539 F.2d 1300, 1302–03 (CCPA 1976) (“[T]he ultimate criterion of whether
a rejection is considered ‘new’ in a decision by the [B]oard is whether
[applicants] have had fair opportunity to react to the thrust of the
rejection.”).
We appreciate that the Examiner’s terminology in the Final Office
Action may have been imprecise in that the Examiner referred to
“substitut[ing] the polyolefin adhesive of Burgsmueller with the propylene
adhesive of Rodriguez” Final Act. 4 (emphasis added). Nonetheless, we are
not convinced that the Appellant was not fully apprised that the Examiner’s
rejection was based on substituting Burgsmueller’s polyolefin polymer with
Rodriguez’s polymer, and that the Appellant had a fair opportunity to
respond to this proposed substitution in the Appeal Brief. As the Appellant
acknowledges in the Appeal Brief,
[t]he Examiner states in the Office Action dated 3/30/2018,
page 8 in reference to Appellants arguments regarding
Rodriguez et al. teaching very different compositions as
compared to the compositions of Appellant[’]s method of claim
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10, that “This argument is not persuasive. The examiner is not
substituting the entire composition of Burgsmueller et al. with
that of Rodriguez et al. Instead, the Examiner is merely
substituting the polymer of Burgsmueller with that of
Rodriguez.”
Appeal Brief 14 (emphasis added). Given the Examiner’s explicit statement
in the Final Office Action that the rejection is based on substitution of only
the polymer component of Burgsmueller’s composition with the polymer
component of Rodriguez’s composition, and the Appellant’s
acknowledgement of that statement in the Appeal Brief, we are not
persuaded that the Examiner advanced a new rejection in the Answer, or that
the Appellant was not adequately informed of the basis of the Examiner’s
rejection prior to the Answer.
An appellant must identify the Examiner’s error in the Appeal Brief
so that the Examiner has a fair opportunity to respond in the Answer. Cf. Ex
parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (“Our
decision is limited to the finding[s] before us for review. . . . [T]he Board’s
primary role is to review adverse decisions of examiners including the
findings and conclusions made by the examiner.”). Accordingly, “[a]ny
argument raised in the reply brief which was not raised in the appeal brief, or
is not responsive to an argument raised in the examiner’s answer . . . will not
be considered by the Board . . . unless good cause is shown.” 37 C.F.R.
§ 41.41(b)(2) (2017). Because we are not persuaded that the Examiner made
a new argument or raised a new ground of rejection in the Answer, we
decline to consider the Appellant’s arguments advanced for the first time in
Reply Brief pages 8–11.
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The Appellant continues to assert that neither Burgsmueller nor
Rodriguez discloses that penetration number (PZ) is an important property
for a hot melt pressure sensitive adhesive, and neither reference “teaches or
suggests how to formulate a hot melt pressure sensitive adhesive such that it
exhibits a PZ between about 20 and about 70” as claimed. Reply Br. 5–6;
see Appeal Br. 10–11. According to the Appellant, “[t]he Examiner
speculates that by picking and choosing from the Burgsmueller et al.
disclosure and the Rodriguez et al. disclosure the skilled artisan could arrive
at a film-covered form that includes a metallocene or single site catalyzed
propylene and exhibits the requisite PZ value,” but “this is not the proper
test for inherency. Inherency is only present when the limitation at issue is
the natural result of the combination of prior art elements.” Reply Br. 6
(citations and internal quotation marks omitted).
We first address the Appellant’s contention that the Examiner
engaged in improper hindsight in determining that the applied prior art
suggests providing a hot melt pressure sensitive adhesive portion as claimed.
Burgsmueller discloses that “[m]any thermoplastic synthetic polymers can
be used in appropriate pressure sensitive materials. These polymers can be
blended with other ingredients such as plasticizer, tackifier, oils and other
additives, to form a pressure sensitive adhesive.” Burgsmueller ¶ 18
(emphasis added). Burgsmueller explicitly identifies “polyolefins, such as
polyethylene, polypropylene and copolymers” as suitable for use as the
thermoplastic polymer of the adhesive composition. Id. ¶ 19. Burgsmueller
claims a pressure sensitive adhesive material comprising “(i) a polyester,
polyacrylate, polyolefin, polyurethane, ethylene vinyl acetate polymers,
styrene block copolymers or mixtures thereof, and (ii) a tackifier” Id. ¶ 45
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(claim 1). Burgsmueller states that “[t]he adhesive composition comprises an
amount of [tackifying] resin between 10 to 60% by weight (related to the
adhesive material of the core).” Id. ¶ 24. Although, plasticizer is identified as
an optional component, Burgsmueller discloses that “plasticizer is preferably
used for viscosity adjustment and is comprised in the adhesive material in an
amount of 0 to 25 wt.-%, preferably 5 to 20 wt.-%.” Id. ¶ 25. Rodriguez
explicitly identifies “a metallocene catalyst polymerization derived
copolymer of propylene and at least one monomer” (¶ 14) as the polymer in
a polyolefin adhesive composition (id. ¶ 2). Given these disclosures, we are
not persuaded that the Examiner erred in determining that the prior art
provides direction to provide a hot melt pressure sensitive adhesive portion
as claimed. See In re O'Farrell, 853 F.2d 894, 903 (Fed. Cir. 1988)
(explaining that an invention is “obvious to try” “where the prior art [gives]
either no indication of which parameters [are] critical or no direction as to
which of many possible choices is likely to be successful.”); Merck & Co. v.
Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“Disclos[ure of] a
multitude of effective combinations does not render any particular
formulation less obvious.”).
We turn next to the Appellant’s contention that the claimed PZ value
would not have been an inherent property in the Burgsmueller-Rodriguez
adhesive composition. The Specification discloses that an “object of the
present invention is to provide packaged hot-melt adhesives which exhibit a
low content of plasticizer to maintain an adhesive composition (a) which
exhibits an increased hardness.” Spec. 5:13–15. Hardness is a measure of an
adhesive’s structural resistance, and a specific material’s hardness “is
obtained by allowing a weighted needle of specified dimensions to penetrate
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into the material under specific test conditions, e.g. at a defined temperature.
The penetration number (PZ) is usually recorded as the number of units of
depth which the needle penetrates in a given time.” Spec. 21:20–26; see also
Spec. 49:26–27 (“The penetration number indicates the hardness of the
polymer composition.”). The Specification discloses that “the packaged hot-
melt adhesive has an average penetration number (PZ), which is between
about 5 and about 200 . . . and most preferably between about 20 and about
70.” Id. at 22:4–7.
As found by the Examiner (Final Act. 3–4), Burgsmueller’s hot melt
adhesive composition, as modified to substitute the polyolefin component
with Rodriguez’s propylene obtained from metallocene catalyzation,
includes the same components as claimed in overlapping amounts. Compare
Burgsmueller ¶ 24 (10–60 wt.% tackifying agent), ¶ 25 (0–25 wt.%,
preferably 5 to 20 wt.% plasticizer), Final Act. 4 (calculating the
metallocene propylene polymer content as 50% when tackifier content is
40% and plasticizer content is 10%), with claim 10 (about 10 wt% to about
60 wt% metallocene catalyzed propylene polymer, between about 15 wt%
and 60 wt% tackifying agent, and a plasticizer). The claims do not specify
the plasticizer amount. However, the Specification’s disclosure that “the
amount of plasticizer in the hot-melt pressure sensitive adhesive composition
(a) [preferably] is less than about 30 wt% referring to the total weight of the
packaged hot-melt adhesive, . . . and most preferably less than about 5 wt%”
(Spec. 24:18–21), and that plasticizer content effects hardness (id. at 5:13–
15), suggests that the Burgsmueller-Rodriguez adhesive composition, which
contains at most 25 wt% plasticizer, would be expected to exhibit the same
needle penetration number as the claimed composition. See In re Kubin, 561
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F.3d 1351, 1357 (Fed. Cir. 2009) (“Even if no prior art of record explicitly
discusses the . . . [limitation], [Appellant’s] application itself instructs that
[the limitation] is not an additional requirement imposed by the claims on
the [claimed invention], but rather a property necessarily present in [the
claimed invention].”); Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985)
(“The fact that appellant has recognized another advantage which would
flow naturally from following the suggestion of the prior art cannot be the
basis for patentability when the difference would otherwise have been
obvious.”); cf. In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed.
Cir. 2002) (citations omitted) (“Inherency is not necessarily coterminous
with the knowledge of those of ordinary skill in the art. Artisans of ordinary
skill may not recognize the inherent characteristics or functioning of the
prior art.”); Titanium Metals Corp. v. Banner, 778 F.2d 775 (Fed. Cir. 1985)
(finding claimed corrosion-resistant property was inherent in a prior art
titanium alloy falling within the claimed ranges even though the prior art did
not disclose this property).
“[W]hen the prior art evidence reasonably allows the PTO to conclude
that a claimed feature is present in the prior art, the evidence ‘compels such
a conclusion if the applicant produces no evidence or argument to rebut it.’”
In re Crish, 393 F.3d 1253, 1259 (Fed. Cir. 2004) (quoting In re Spada, 911
F.2d 705, 708 n.3 (Fed. Cir. 1990)); see also In re Peterson, 315 F.3d 1325,
1330 (Fed. Cir. 2003) (“[T]he existence of overlapping or encompassing
ranges shifts the burden to the applicant to show that his invention would not
have been obvious.”). The Appellant has not provided persuasive argument
or evidence to meet its burden to show that the Burgsmueller-Rodriguez
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adhesive composition would not have possessed a penetration number within
the claimed range.
The Appellant also argues that the Examiner did not interpret claim 10
correctly and, as a result, erred in finding that “the hot melt pressure
sensitive adhesive portion of the individual forms” (claim 10) resulting from
the combined teachings of Burgsmueller and Rodriguez necessarily would
have “an average penetration number (PZ) . . . between about 20 and about
70” (id.). Reply Br. 7. The Appellant argues that “the Examiner’s inherency
analysis concludes with the assertion that the film-covered hot melt pressure
sensitive adhesive form that allegedly results from the proposed combination
of Burgsmueller et al. and Rodriguez et al. would inherently exhibit the PZ
property set forth in claim 10,” however, “it is not the film covered form that
exhibits the PZ property; rather, it is the hot melt pressure sensitive adhesive
that must exhibit this property.” Reply Br. 7.
Even if the Appellant is correct in stating that the Examiner’s finding
as to the average penetration number is based on an erroneous interpretation
of claim 10, the Appellant has not persuaded us of reversible error in the
Examiner’s rejection because the Examiner found that Burgsmueller, as
modified by Rodriguez, discloses or suggests the same hot melt pressure
sensitive adhesive in the same form as claimed. See Final Act. 4–5.
Any additional arguments made by the Appellant, but not discussed in
this Decision, have been addressed by the Examiner and are unpersuasive
based on the fact finding and reasoning stated in the Answer and the Final
Office Action.

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CONCLUSION
The Appellant has not identified reversible error in the Examiner’s
conclusion of obviousness. Accordingly, we sustain all three grounds of
rejection.
DECISION SUMMARY

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
10–12,
15, 16,
19, 22, 23
103 Burgsmueller,
Rodriguez
10–12, 15,
16, 19, 22,
23

13 103 Burgsmueller,
Rodriguez, Podevyn
13
18, 21 103 Burgsmueller,
Rodriguez, Sayovitz
18, 21
Overall
Outcome:
10–13, 15,
16, 18, 19,
21–23

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED