Thilo Dollase et al.

Patent Trials and Appeals Board

Aug 28, 2019

14449660 - (D) (P.T.A.B. Aug. 28, 2019)

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.
14/449,660 08/01/2014 Thilo Dollase 101769-708 8983
27384 7590 08/28/2019
Briscoe, Kurt G.
Norris McLaughlin, PA
875 Third Avenue, 8th Floor
New York, NY 10022
EXAMINER
SAWDON, ALICIA JANE
ART UNIT PAPER NUMBER
1781
MAIL DATE DELIVERY MODE
08/28/2019 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 THILO DOLLASE, ANIKA PETERSEN,
MICHAEL MAYER, and ROLF BRIX
____________________

Appeal 2018-008991
Application 14/449,660
Technology Center 1700
____________________

Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
DEBRA L. DENNETT, Administrative Patent Judges.

DENNETT, Administrative Patent Judge.

DECISION ON APPEAL1
STATEMENT OF THE CASE
Appellant2 appeals under 35 U.S.C. § 134(a) from the final rejections
of claims 1–4, 6–12, and 14. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART, and issue NEW GROUNDS of rejection.

1 In our Opinion, we refer to the Specification filed August 1, 2014
(“Spec.”); the Applicant-Initiated Interview Summary dated October 27,
2017 (“Int. Summ.”); the Final Office Action dated December 21, 2017
(“Final Act.”); the Advisory Action dated March 29, 2018 (“Adv. Act.”); the
Appeal Brief filed June 14, 2018 (“App. Br.”); the Examiner’s Answer dated
July 18, 2018 (“Ans.”); and the Reply Brief filed September 18, 2018
(“Reply Br.”).
2 Appellant is the applicant, tesa SE, identified in the Appeal Brief as the
real party in interest. App. Br. 3.
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The claims are directed to a pressure-sensitive adhesive based on
polyacrylate, synthetic rubber, and a particular tackifier. Claims 1 and 9,
which are reproduced below with key limitations emphasized, illustrate the
claimed subject matter:
1. A pressure-sensitive adhesive comprising:
a) 40–60 wt%, based on the total weight of the
adhesive, of at least one poly(meth)acrylate;
b) 20–40 wt%, based on the total weight of the
adhesive, of at least one synthetic rubber,
said at least one synthetic rubber being a mixture of
block copolymers having an A-B, A-B-A, (A-B)3X or (A-B)4
construction, wherein block A is a polystyrene, block B is a
polybutadiene, and X is residue of a coupling reagent or
initiator,
said mixture comprising one or both of diblock
copolymers A-B and triblock copolymers A-B-A; and
c) 7–20 wt%, based on the total weight of the
adhesive, of at least one tackifier compatible with the
poly(meth)acrylate(s),
wherein a double-sided adhesive tape comprising the
pressure-sensitive adhesive on both sides of the adhesive tape
exhibits a mean detachment force above 60 N/cm in
Dynamic L Jig when conducted at both room temperature
and -30°C.
9. An adhesive tape comprising at least one layer of a
pressure-sensitive adhesive, said pressure-sensitive adhesive
comprises:
a) 40–60 wt%, based on the total weight of the
adhesive, of at least one poly(meth)acrylate;
b) 20–40 wt%, based on the total weight of the
adhesive, of at least one synthetic rubber,
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said at least one synthetic rubber being a mixture of
block copolymers having an A-B, A-B-A, (A-B)3X or (A-B)4
construction, wherein block A is a polystyrene, block B is a
polybutadiene, and X is residue of a coupling reagent or
initiator,
said mixture comprising one or both of diblock
copolymers A-B and triblock copolymers A-B-A; and
c) 7–20 wt%, based on the total weight of the
adhesive, of at least one tackifier compatible with the
poly(meth)acrylate(s),
wherein the adhesive tape is a double-sided adhesive tape
comprising the pressure-sensitive adhesive on both sides of
the adhesive tape, and
wherein the adhesive tape exhibits a mean detachment force
above 60 N/cm in Dynamic L Jig when conducted at both
room temperature and -30°C.
App. Br. (Claims App’x 1, 2).3
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Zajaczkowski et al.
(“Zajaczkowski”)
US 2010/0120931 A1 May 13, 2010
Kinning et al.
(“Kinning”)
EP 0352901 A1 Jan. 31, 1990
REJECTIONS
The Examiner maintains and Appellant seeks review of the following
rejections: (1) claims 1–4, 6–12, and 14 under 35 U.S.C. § 112(a) for failing

3 Appellant has not numbered the pages of the Claims Appendix in the
Appeal Brief. In this opinion, we refer to the pages of the Claims Appendix
using a single set of consecutive numbers.
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to comply with the written description requirement;4 and (2) claims 1–4, 6–
12, and 14 under 35 U.S.C. § 103 as obvious over Zajaczkowski in view of
Kinning. Final Act. 2–8; App. Br. 5–14.
OPINION
We issue a new ground of rejection of dependent claim 11 as
indefinite. Claim 11 is reproduced below with the indefinite language
emphasized:
11. The adhesive tape according to claim 9 wherein the
adhesive tape consists of a layer of said pressure-sensitive
adhesive.
App. Br. (Claims App’x 3).
A claim fails to comply with Section 112 when the metes and bounds
of the claim are not clear because the claim contains words or phrases whose
meaning is unclear. Ex parte McAward, Appeal No. 2015-006416, 2017
WL 3669566, at *5 (PTAB Aug. 25, 2017). Claim 11 (depending from
independent claim 9) thus requires a clear understanding of the limitation
“wherein the adhesive tape consists of a layer of said pressure-sensitive
adhesive.” App. Br. (Claims App’x 3) (emphasis added).
A skilled artisan, however, would not have a clear understanding of
this limitation. Claim 9 requires that “the adhesive tape is a double-sided
adhesive tape comprising the pressure-sensitive adhesive on both sides of
the adhesive tape.” Id. at 2 (emphasis added). In other words, the adhesive

4 The Examiner included claim 15 in the statement of this rejection. Final
Act. 2; Ans. 3. This is apparently a typographical error, given the Examiner
acknowledges that claims 13 and 15 are withdrawn from consideration
(Final Act. 1) and the absence of any grounds for rejecting claim 15. See
generally Final Act. 2–3; Ans. 3–4.
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tape according to claim 9 requires two layers of pressure-sensitive adhesive.
Thus, it is not clear how the adhesive tape according to claim 11 is limited to
a single layer of pressure-sensitive adhesive, while having pressure-sensitive
adhesive on both sides of the adhesive tape. Consequently, we reject claim
11 as indefinite.
Lack of Written Description
The Examiner finds that the added limitation “the adhesive tape
exhibits a mean detachment force above 60 N/cm in Dynamic L Jig when
conducted at both room temperature and -30°C,” as recited in claims 1 and
9, is not supported by the Specification as filed. Final Act. 2; see App. Br.
(Claims App’x 1, 2). The Examiner finds that because the Specification
only exemplifies specific amounts and monomer types, it is unclear if this
claimed property would be present in the broadly claimed composition.
Final Act. 2–3 (citing Spec. Table 1).
Appellant asserts that the disputed limitation resulted from a proposed
amendment of claims 1 and 9 to “recite the unexpected results of the claimed
invention.” App. Br. 5. Following a telephonic interview to discuss the
proposed amendment on October 25, 2017, Appellant “formally introduced
the agreed upon claim amendment.”5 Id. Appellant argues that the
Examiner’s rejection did not “provide a reasonable basis to reject a claim for
failing to satisfy the written description requirement, by providing ‘a full
development’ of the reasons showing that, by a preponderance of the

5 Although the Examiner “agreed [with Appellant] that the proposed
amendment would overcome the applied art of record,” the Examiner finds
that “the range for detachment force was open ended, and that a rational[e]
for support above the claimed amount (e.g., a trend in the values) for the
range is suggested.” Int. Summ. 1.
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evidence, a person of ordinary skill in the art would not recognize a
description of the claimed invention in the disclosure.” Id. at 6 (citing
MPEP § 2163.04); see also App. Br. 5 (MPEP § 706.03).
In response, the Examiner finds that,
[w]hile Appellant has provided evidence supporting feature 1[,
i.e., components a)–c),] and feature 2[, i.e., a mean detachment
force above 60 N/cm in Dynamic L Jig when conducted at both
room temperature and -30°C] up to a force of 148 N/cm, there
is not support for the open ended range (e.g., forces of 1,000
N/cm) and the claimed composition. While Appellant may
disavow any [pressure-sensitive adhesive,] which does not
encompass both of feature 1 and feature 2, the claimed subject
matter must still be supported by the disclosure[,] i.e., both the
composition and the claimed force across the entirety of the
breadth of the claim, not each feature individually.
Ans. 10 (emphasis added).
For an applicant to comply with the 35 U.S.C. § 112(a) written
description requirement, the applicant’s specification must “convey with
reasonable clarity to those skilled in the art that, as of the filing date sought,
he or she was in possession of the invention.” Carnegie Mellon Univ. v.
Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008) (addressing
the pre-AIA version of § 112, 1st paragraph, which insignificantly differs
from current § 112(a) with regard to the written description requirement).
The Examiner
‘bears the initial burden . . . of presenting a prima facie case of
unpatentability.’ In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992). Insofar as the written description requirement is
concerned, that burden is discharged by ‘presenting evidence or
reasons why persons skilled in the art would not recognize in
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the disclosure a description of the invention defined by the
claims.’
In re Alton, 76 F.3d 1168, 1175 (Fed. Cir. 1996). If “the specification
contains a description of the claimed invention, albeit not in ipsis verbis (in
the identical words), then the examiner . . . , in order to meet the burden of
proof, must provide reasons why one of ordinary skill in the art would not
consider the description sufficient.” Id.
We find that the Examiner has not adequately explained why
Appellant was not in possession of the recited composition and the claimed
mean detachment force across the entirety of the breadth of the claim at the
time the application was filed. There is no dispute that the Specification as
filed describes desirable ranges for the claimed force provided by the
pressure-sensitive adhesive. See Ans. 10; Reply Br. 2; Spec. 25:10–15
(describing dynamic L jig testing of pressure-sensitive adhesive detachment
forces and that “[g]ood values, both at room temperature and at -30°C, are
regarded as forces above 60 N/cm; values above 75 N/cm are preferred[; and
v]alues above 100 N/cm are regarded as very good.”). Appellant has argued
that those skilled in the art would know “that the minimum mean
detachment force . . . 60 N/cm in Dynamic L Jig, is difficult to achieve” and
“would not expect the [claimed] composition . . . to have a minimum mean
detachment force reaching an astronomic value such as 1,000 N/cm
suggested by the Examiner.” Reply Br. 3.
The Examiner has not presented evidence or reasons why persons
skilled in the art would not recognize the claimed property range exhibited
by a pressure-sensitive adhesive in the disclosure. See Final Act. 2–3; Ans.
10. The Examiner thus does not challenge Appellant’s position that the
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Specification’s description would have conveyed, to those of skill in the art,
that Appellant was in possession of the disputed limitations at the time of
filing. See Alton, 76 F.3d at 1175. We, therefore, reverse the rejection of
claims 1 and 9 on these grounds.
The Examiner rejected claims 2–4, 6–8, and 10–12, and 14 “as . . .
dependent on indefinite claims 1 or 9.” Final Act. 3. In the previous
section, however, we found that the limitation “consists of a layer” recited in
claim 11 is indefinite. Given that the meaning of this limitation is required
to assess whether the limitations recited in claim 11 (and the claim which it
depends on) are adequately supported by the original disclosure of the
Specification, we cannot reach a determination as to the correctness of the
Examiner’s findings that the limitations recited in claim 11 lack written
description support sufficient to comply with 35 U.S.C. § 112(a). Cf. In re
Moore, 439 F.2d 1232, 1235 (CCPA 1971) (one is not in a position to
determine whether a claim is enabled under § 112, 1st paragraph, until the
metes and bounds of that claim are determined under the 2nd paragraph of
this section of the statute).
In summary, we reverse the rejection of claims 1–4, 6–10, 12, and 14
under 35 U.S.C. § 112(a) for failing to comply with the written description
requirement. 37 C.F.R. § 41.37(c)(1)(iv).
Rejection over Prior Art
The Examiner rejects claims 1–4, 6–12, and 14 over Zajaczkowski
and Kinning. Final Act. 3. The Examiner finds that Zajaczkowski discloses
a pressure-sensitive adhesive as claimed, except it does not disclose that the
adhesive contains the requisite synthetic rubber and the mean detachment
force property exhibited by a double-sided adhesive tape. Id. at 3–4 (citing
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Zajaczkowski ¶¶ 13, 36, 40, 131). The Examiner finds that Kinning
discloses an acrylic pressure-sensitive adhesive comprising 5 to 35 parts by
weight of a hydrocarbon elastomer, which further comprises the claimed
styrene-butadiene multiblock copolymer. Id. (citing Kinning 3:55–58, 5:1–
10, 9:1–10:23 (listing suitable “Elastomers”)). The Examiner reasons that it
would have been obvious to one of ordinary skill in the art at the time of the
invention “to have added 5–35 wt% of a hydrocarbon elastomer such as a
styrene-butadiene multiblock copolymer as taught by Kinning to the poly-
acrylate [pressure-sensitive adhesive] composition of Zajaczkowski, to
achieve a [pressure-sensitive adhesive] composition with improved peel
adhesive and cold slam properties.” Final Act. 4 (citing Kinning 5:5–15).
Appellant argues that the Examiner unreasonably “pick[s] only the
type and amount of the hydrocarbon elastomers taught by Kinning, but
disregard[s] the type and amount of acrylic copolymer taught” therein. App.
Br. 8. Appellant further argues that the Examiner “incorrectly assumes that
the advantages purported by Kinning [are] attributed to the addition of the
specific synthetic rubber of [A]ppellant’s claims” or by combining
Kinning’s rubber with allegedly “‘similar types of acrylate’” taught by both
references. Id. (quoting Adv. Act. 3). According to Appellant, Kinning
instead attributes the advantages of improved peel adhesive and cold slam
properties to the complete “composition having a specific combination of
features” with an acrylic copolymer content that is higher than claimed.
App. Br. 8. Appellant thus concludes that the ordinarily skilled artisan
“would not [have] be[en] motivated to select and combine . . . the amount
and type of poly(meth)acrylate from Zajaczkowski with . . . the amount and
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one specific type of synthetic rubber from Kinning, with a reasonable
expectation of success.” Id. at 9; see also Reply Br. 4.
Appellant’s arguments are not persuasive.
As the Examiner finds, both Zajaczkowski and Kinning teach alkyl
acrylates having 4 to 14 carbon atoms. Ans. 11 (citing Zajaczkowski ¶ 13;
Kinning 4:40–45). The Examiner further finds that the relied upon
references teach suitable amounts of two of the three claimed components:
(i) Kinning teaches 5–35 parts by weight of a hydrocarbon elastomer; and
(ii) Zajaczkowski teaches 5 to 60 wt%, 10–30 wt%, and 15–30 wt% of a
tackifier. Final Act. 4 (citing Kinning 3:55–58; Zajaczkowski ¶¶ 40, 62, 63).
In our view, the ordinarily skilled artisan would have found it obvious to
have calculated a range for the acrylate amount based on the amounts of
these two components. We, therefore, agree with the Examiner that
a person having ordinary skill in the art before the effective
filing date of the claimed invention would have found it
obvious for the poly(meth)acrylate to be present in an amount
ranging from about 5 to about 90 wt%, or more preferably 35 to
80 or 85 wt%, based on the total weight of the adhesive,
overlapping the claim[ed] 40–60 wt%.
Final Act. 4. 6
On the record before us, Appellant does not show reversible error in
the Examiner’s findings of fact. The Examiner’s explanation of the reasons

6 Appellant argues that “[a] person having ordinary skill in the art would
[have] know[n] that formulating adhesives is not a simple matter of ‘putting
together and mixing Zajaczkowski’s tackified acrylates and Kinning’s
acrylate/elastomer mixture.’” Reply Br. 4. The Federal Circuit, however,
has stated that examiners are “persons of scientific competence in the fields
in which they work” and that their findings are “informed by their scientific
knowledge, as to the meaning of prior art references to persons of ordinary
skill in the art.” In re Berg, 320 F.3d 1310, 1315 (Fed. Cir. 2003).
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a skilled artisan would have had to combine the prior art teachings is
sufficient when an allowance is made for “the inferences and creative steps
that a person of ordinary skill in the art would employ.” KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007). “One of ordinary skill in the art
need not see the identical problem addressed in a prior art reference to be
motivated to apply its teachings.” Cross Med. Prods., Inc. v. Medtronic
Sofamor Danek, Inc., 424 F.3d 1293, 1323 (Fed. Cir. 2005).
Appellant also urges that the Examples in the Specification, Table 3 in
the Appeal Brief, and the Dollase Declaration provide sufficient data to
show unexpected results exhibited by the claimed pressure-sensitive
adhesive composition. App. Br. 9. In particular, Appellant contends that
“the mean detachment force feature recited in independent claims 1 and 9 is
shown in the case of each one of inventive examples 1–7, and none of
comparative examples 1–7.” Id. at 10 (Table 3). Appellant argues that the
claimed pressure-sensitive adhesive provides mean detachment force values
that unexpectedly exceed such values provided by the pressure-sensitive
adhesives taught by Zajaczkowski and Kinning. See generally id. at 11.
Appellant separately argues for reversal of the obviousness rejection
of claims 2 and 3 based on the results provided in Table 3. Id. at 13–14.
With respect to claim 2, Appellant argues that “comparative examples 2 and
4–7 each have weight ratios of poly(meth)acrylates to the at least one
synthetic rubber falling within the 18:1 to 1:1 range[, which the Examiner
alleges is taught by the prior art], but outside the claimed 1:1 to 3:1 range.”
Id. Regarding claim 3, Appellant argues that “comparative examples 2 and
7 each have weight ratios of poly(meth)acrylates to synthetic rubber falling
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within the 1:1 to 12:1 range[, which the Examiner alleges is taught by the
prior art], but outside the claimed ‘at most 2:1.’” Id. at 14.
Appellant’s reliance on the Examples in the Specification, Table 3 in
the Appeal Brief, and the Dollase Declaration to evince unexpected results
from the use of the claimed pressure-sensitive adhesive fails to rebut the
prima facie case of obviousness at least for the reasons pointed out by the
Examiner. See Ans. 12–13. The burden of showing unexpected results rests
on the person who asserts them. See In re Baxter Travenol Labs., 952 F.2d
388, 392 (Fed. Cir. 1991); In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972).
The unexpected results must be established by factual evidence, and attorney
statements are insufficient to establish unexpected results. See In re Geisler,
116 F.3d 1465, 1470–71 (Fed. Cir. 1997). Furthermore, a showing of
unexpected results supported by factual evidence must be reasonably
commensurate in scope with the degree of protection sought by the claims
on appeal. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re
Clemens, 622 F.2d 1029, 1035 (CCPA 1980).
Examples 1–7—which Appellant identifies as having superior mean
detachment force values—all comprise a specific poly(meth)acrylate, a
specific synthetic rubber, and a specific tackifier. See App. Br. 10 (Table 3);
Dollase Decl. 2. In contrast, the claims are drawn to a pressure-sensitive
adhesive, having “at least one” poly(meth)acrylate, “at least one” synthetic
rubber, and “at least one” tackifier, and thus the claims encompass a broad
scope of compounds. App. Br. (Claims App’x 1, 2). Appellant does not
persuasively explain how pressure-sensitive adhesives comprising a single
example of the claimed components “a),” “b),” and “c)” are commensurate
in scope with the claims on appeal, which encompass numerous untested
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compounds. See id.; see also id. at 12. Moreover, our review of the
Examples in the Specification and the Dollase Declaration finds that this
evidence does not adequately support Appellant’s assertion that the L jig
results would not significantly differ if mixtures of synthetic rubbers or
mixtures of tackifiers were used instead of a single species of synthetic
rubber or a tackifier. See Spec. 25–29; Dollase Decl. 2.
We conclude that reversible error in the obviousness rejection of
claims 1 and 9 has not been demonstrated by a preponderance of the
evidence of record.
Appellant separately argues for reversal of the obviousness rejection
of claim 11. App. Br. 14.
When a claim is held to be indefinite, however, we normally do not
assess the propriety of rejections of the claim under 35 U.S.C. § 103. In re
Wilson, 424 F.2d 1382, 1385 (CCPA 1970) (“If no reasonably definite
meaning can be ascribed to certain terms in the claim, the subject matter
does not become obvious—the claim becomes indefinite.”). One cannot
logically determine whether an accused product comes within the bounds of
a claim of unascertainable scope. Amgen, Inc. v. Hoechst Marion Roussel,
Inc., 314 F.3d 1313, 1342 (Fed. Cir. 2003).
In summary, for the reasons set forth above and in the Examiner’s
Final Office Action and Answer, we affirm the rejection of claims 1–4, 6–
10, 12, and 14 under 35 U.S.C. § 103 as obvious over Zajaczkowski in view
of Kinning. 37 C.F.R. § 41.37(c)(1)(iv).
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DECISION
We reverse the rejection of claims 1–4, 6–10, 12, and 14 under 35
U.S.C. § 112(a) for failing to comply with the written description
requirement. We affirm the rejection of claims 1–4, 6–10, 12, and 14 under
35 U.S.C. § 103 as obvious over Zajaczkowski in view of Kinning. We
reject claim 11 as indefinite on new grounds. We do not reach the rejections
of pending claim 11 as lacking written description for a claim limitation and
as obvious over prior art.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b), which provides that “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Section 41.50(b) also provides that Appellants, WITHIN TWO MONTHS
FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new ground of rejection to avoid
termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the prosecution will be remanded to
the examiner. . . .

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART; NEW GROUND OF REJECTION
PURSUANT TO 37 C.F.R, § 41.50(b)