Zhang, Raymond et al.

Patent Trials and Appeals Board

Jan 28, 2020

14162301 - (D) (P.T.A.B. Jan. 28, 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.
14/162,301 01/23/2014 Raymond Zhang PT019120/US 5795
31217 7590 01/28/2020
Henkel Corporation
One Henkel Way
Rocky Hill, CT 06067
EXAMINER
ROSWELL, JESSICA MARIE
ART UNIT PAPER NUMBER
1767
NOTIFICATION DATE DELIVERY MODE
01/28/2020 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):
rhpatentmail@henkel.com
trish.russo@henkel.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAYMOND ZHANG, DAOQIANG LU, and
SHABBIR ATTARWALA

Appeal 2019-001252
Application 14/162,301
Technology Center 1700
Before MICHAEL P. COLAIANNI, MONTÉ T. SQUIRE, and
SHELDON M. MCGEE, Administrative Patent Judges.
MCGEE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, and 4–21.
We have jurisdiction. 35 U.S.C. § 6(b).
We affirm.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Henkel AG & Co.
and Henkel IP & Holding GMBH. Br. 2.
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Application 14/162,301
2
CLAIMED SUBJECT MATTER
The claims are directed to an adhesive composition. Sole independent
claim 1, reproduced below, is illustrative of the claimed subject matter:

1. An adhesive composition comprising, based on the total
weight of the adhesive composition:
(1) from 38.0 to 75.0 percent by weight of a urethane
oligomer having at least one (meth)acryloyloxy group;
(2) from 0.1 to 10.0 percent by weight of at least one
multifunctional (meth)acrylate monomer;
(3) from 15.0 to 60.0 percent by weight of at least one
monofunctional (meth)acrylate monomer;
(4) from 0.5 to 5.0 percent by weight of a photoinitiator;
(5) from 0.1 to 5.0 percent by weight of a silane coupling
agent; and
(6) from 0 to 5.0 percent by weight of an additive selected
from the group consisting of a tackifier, a thickening agent, a
flame retardant, a leveling agent and a thermal initiator,
wherein the urethane oligomer having at least one
(meth)acryloyloxy group has a Tg of from -80°C to 0°C and a
Brookfield viscosity at 25°C of from 1000 mPa·s to 190000
mPa·s and wherein the cured product of the adhesive
composition has a transparency greater than 92% as measured in
accordance with ASTM D1003-2007.

REFERENCES
The prior art relied upon by the Examiner is:
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Application 14/162,301
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Name Reference Date
Acevedo US 2004/0181007 A1 Sept. 16, 2004
Mitani US 2005/0090574 A1 Apr. 28, 2005
Kita US 2006/0154066 A1 July 13, 2006
Oshima US 2008/0149270 A1 June 26, 2008
Ichikawa US 2009/0246915 A1 Oct. 1, 2009
Oshima (“Oshima ’263”) US 2010/0012263 A1 Jan. 21, 2010
REJECTIONS
On appeal, the Examiner maintains the following rejections:
I. Claims 1, 2, and 4–16 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Oshima, in view of Kita,
when taken with Acevedo and Mitani.
II. Claims 1, 17, 19, and 20 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Oshima, in view of
Ichikawa, when taken with Acevedo and Mitani.
III. Claims 1, 18, and 21 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Oshima, in view of
Ichikawa, and further in view of Oshima ’263, when taken with
Acevedo and Mitani.
DISCUSSION
Each of the obviousness rejections include sole independent claim 1,
which is the only claim that Appellant argues. Br. 10–19. We, therefore,
focus our discussion on this claim.
In each of the obviousness rejections, the Examiner finds that Oshima
teaches the claimed adhesive composition, except for the requirement that
the silane coupling agent is present in recited amount. Final Act. 3–4, 7–8,
10–11. To address this difference, the Examiner turns to Kita (id. at 4) or,
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alternatively, Ichikawa (id. at 8, 11), which the Examiner finds discloses the
use of a silane coupling agent in an adhesive composition, and in an amount
that falls within the claimed range. Based on the combined disclosures of
Oshima and Kita, or Oshima and Ishikawa, the Examiner determines it
would have been obvious to employ a silane coupling agent in an adhesive
composition and in an amount that falls within the claimed range, “in order
to improve adhesion of the adhesive layer, as is a well-known property to
one of ordinary skill in the art.” Id. at 4, 8.
The Examiner relies on the disclosures of Acevedo and Mitani as
evidence that the recited Tg and viscosity limitations would be satisfied by
employing a species of urethane oligomer that falls within the scope of the
claims. See id. at 4, 10. The Examiner also determines that, because the
relied upon references teaches the claimed reagents in the claimed amounts,
and substantially similar processes, the prior art composition would have the
recited transparency. Id. at 4.
We have considered Appellant’s arguments (Br. 10–19) and are
unpersuaded that Appellant has identified reversible error in the rejections.
In re Jung, 637 F.3d 1356, 1365–66 (Fed. Cir. 2011). Therefore, we sustain
the obviousness rejections before us based on the findings of fact,
conclusions of law, and rebuttals to arguments expressed by the Examiner in
the Final Action and in the Answer. We add the following only for
emphasis.
Appellant spends a significant portion of its argument discussing the
“object” of the prior art. Br. 10–15. Such arguments do not reveal error in
the Examiner’s findings or the obviousness conclusion because the claims
are composition claims. Here, the Examiner undisputedly finds that Oshima
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discloses each claimed element––including the silane coupling agent––but
does not expressly recite the amount of such a coupling agent. Final Act. 3,
7–8, 10–11. Thus, Oshima’s purported “object” vis-à-vis the purpose of the
claimed adhesive is of little relevance.
[I]t is not necessary in order to establish a prima facie case of
obviousness that both a structural similarity between a claimed
and prior art compound (or a key component of a composition)
be shown and that there be a suggestion in or expectation from
the prior art that the claimed compound or composition will have
the same or a similar utility as one newly discovered by
applicant.
In re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990, en banc).
We also note that Appellant’s attempt to rely on case law specific to
lead chemical compounds is inapposite because the claims at issue here are
directed to compositions, not compounds. Br. 14–15.
Finally, we observe that Appellant’s assertions regarding the
Examiner’s combination of Oshima and Kita, or alternatively, Oshima and
Ichikawa, fail to explain why, precisely, the technologies disclosed in the
prior art are so different that the skilled artisan would not have sought to
combine them. Br. 16–17. Such assertions do not identify reversible error
in the Examiner’s obviousness conclusion.
For these reasons, and those provided by the Examiner in the Final
Action and the Answer, we sustain the obviousness rejections on appeal.
CONCLUSION
The Examiner’s rejections are affirmed.
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DECISION SUMMARY
Claims 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed
1, 2, 4–16 103(a) Oshima, Kita,
Acevedo, Mitani
1, 2, 4–16
1, 17, 19, 20 103(a) Oshima, Ichikawa,
Acevedo, Mitani
1, 17, 19,
20

1, 18, 21 103(a) Oshima, Ichikawa,
Oshima ’263, Acevedo,
Mitani
1, 18, 21
Overall
Outcome
1, 2, 4–21
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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED