3M INNOVATIVE PROPERTIES COMPANY

Patent Trials and Appeals Board

Feb 22, 2022

2021005250 (P.T.A.B. Feb. 22, 2022)

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. 15/572,195 11/07/2017 Kenji Wakamatsu 76433US010 3543 32692 7590 02/22/2022 3M INNOVATIVE PROPERTIES COMPANY PO BOX 33427 ST. PAUL, MN 55133-3427 EXAMINER DAVIS, ZACHARY M ART UNIT PAPER NUMBER 1783 NOTIFICATION DATE DELIVERY MODE 02/22/2022 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): LegalUSDocketing@mmm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte KENJI WAKAMATSU and TSUNEHARU TAKEUCHI ____________ Appeal 2021-005250 Application 15/572,195 Technology Center 1700 ____________ Before TERRY J. OWENS, KAREN M. HASTINGS, and JEFFREY R. SNAY, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision to reject claims 1-7, 9-12, and 18-24. See Final Act. 1. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies 3M Company as the real party in interest (Appeal Br. 2). Appeal 2021-005250 Application 15/572,195 2 CLAIMED SUBJECT MATTER Claims 1 and 24 illustrate the subject matter on appeal: 1. A pressure sensitive adhesive article, comprising: a pressure sensitive adhesive layer containing a pressure sensitive acrylic polymer, a chlorinated polyolefin and inorganic fine particles; and a fibrous sheet formed by a plurality of mutually intersected fibers that are arranged in the pressure sensitive adhesive layer so the pressure sensitive adhesive layer is present on opposite main surfaces of the fibrous sheet, wherein the tensile strength of the fibrous sheet is in the range of from about 500 to about 2500 N/25 mm in an axial direction and a transverse direction. 24. An adhesive article used for reinforcing a vehicle component, the adhesive article comprising: an adhesive layer comprising an adhesive acrylic polymer and an inorganic microparticle; and a fiber sheet disposed within the adhesive layer and formed from a plurality of fibers intersecting each other, wherein the fibers are glass fibers, carbons fibers, resin fibers or a combination thereof. Appeal Br. 13, 15 (Claims App.). Independent claims 22 and 23 each recite an adhesive article similar to that of claims 1 and 24 (Appeal Br. 15 (Claims App.)). REFERENCES The Examiner relied upon the following prior art: Name Reference Date Traser WO 2013/019493 A2 Feb. 7, 2013 Akasaka JP 10-158619 June 16, 1998 S-Glass S-Glass Materials www.lbie.com/n3111.htm retrieved 2014 Appeal 2021-005250 Application 15/572,195 3 REJECTIONS ON APPEAL Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis 24 102 Traser 1-7, 9-12, 18- 21 103 Traser, Akasaka, S-Glass 22 103 Traser, Akasaka 23 103 Traser, S-Glass At the outset, we note that the Examiner withdrew the 112 rejection (Ans. 12; see also Advisory Act. 2). OPINION Upon consideration of the evidence relied upon in this appeal and each of Appellant’s contentions as set forth in the Appeal Brief and Reply Brief, we determine that Appellant has not identified reversible error in the Examiner’s rejections (see generally Ans.). In re Jung, 637 F.3d 1356, 1365-66 (Fed. Cir. 2011) (explaining the Board’s long-held practice of requiring Appellant(s) to identify the alleged error in the Examiner’s rejection). We sustain the rejection for the reasons expressed by the Examiner in the Final Office Action and the Answer. We add the following primarily for emphasis. The § 102 Rejection In construing claims, “the PTO must give claims their broadest reasonable construction consistent with the specification. . . . Therefore, we look to the specification to see if it provides a definition for claim terms, but otherwise apply a broad interpretation.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). “[A]s applicants may amend claims to Appeal 2021-005250 Application 15/572,195 4 narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee.” Id.2 Appellant’s main argument is that Traser does not disclose that its fiber sheet is within a single adhesive layer (Appeal Br. 6-7). This argument is not persuasive of reversible error for reasons explained by the Examiner (Ans. 13). Notably, Appellant uses a similar process as that of Traser of sandwiching the fiber sheet between two separate layers of pressure sensitive adhesive. Contrary to the contention made in the Reply Brief, Appellant’s Specification does not disclose any further processing to form a single layer of adhesive from the two initial layers (Reply Br. 2). In any event, it is well established that, as a general rule, the words “a” or “an” in a patent claim carry the meaning of one or more. Only when there is a clear intent to mean “one” will the term be so interpreted, and such exceptions to this rule are extremely limited. 01 Communique Laboratory, Inc. v. LogMeIn, Inc., 687 F.3d 1292 (Fed. Cir. 2012); TiVo, Inc. v. EchoStar Commc’ns Corp., 516 F.3d 1290, 1303 (Fed. Cir. 2008); Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir. 2008)(“The subsequent use of definite articles ‘the’ or ‘said’ in a claim to refer back to the same claim term does not change the general plural rule, but simply reinvokes that non-singular meaning.”). An exception to the 2 Cf. In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997) (in prosecution before the PTO “[i]t is the applicants’ burden to precisely define the invention, not the PTO’s.”). The purpose of this requirement is to provide the public with adequate notice of the boundaries of protection involved. The time to do so is during prosecution where an applicant has the ability to amend the claims to more precisely define the metes and bounds of the claimed invention. See Ex parte Miyazaki, 89 USPQ2d 1207, 1210-12 (BPAI 2008). Appeal 2021-005250 Application 15/572,195 5 general rule arises only “where the language of the claims themselves, the specification, or the prosecution history necessitate a departure from the rule.” Id. at 1342-43. Appellant has not identified sufficient reasons for such an exception in this case. Accordingly, we affirm the Examiner’s § 102 rejection. The § 103 Rejections It has been established that “the [obviousness] analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of 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); see also In re Fritch, 972 F.2d 1260, 1264- 65 (Fed. Cir. 1992) (a reference stands for all of the specific teachings thereof as well as the inferences one of ordinary skill in the art would have reasonably been expected to draw therefrom). With respect to the §103 rejections based on Traser with Akasaka and/or S-Glass, Appellant’s main arguments, in addition to the argument addressed above, are that 1) the Examiner has failed to identify a sufficient reason to use the chlorinated polypropylene of Akasaka in the PSA of Traser without use of impermissible hindsight (Appeal Br. 8-9; Reply Br. 3); and 2) there is no adequate reason to use S-Glass fabric in Traser absent impermissible hindsight, since Traser uses a perforated film reinforcement (Appeal Br. 9). Appellant’s arguments are not persuasive of reversible error as they fail to consider the breadth of the claims, the applied prior art as a whole, Appeal 2021-005250 Application 15/572,195 6 and the inferences that one of ordinary skill would have made, as aptly explained by the Examiner (Ans. 13-16). Under the flexible inquiry set forth by the Supreme Court, the PTO must take account of the “inferences and creative steps,” or even routine steps, that an ordinary artisan would employ. Ball Aerosol & Specialty Container, Inc. v. Limited Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009). Notably, as the Examiner points out, one of ordinary skill would have readily inferred that the chlorinated polyolefin of Akasaka would have been reasonably expected to increase the adhesive strength of Traser’s pressure sensitive adhesive because both Traser and Akasaka concern acrylic-based pressure sensitive adhesives (e.g., Ans. 14-15). The Examiner also points out that Traser explicitly details that its internal perforated solid film reinforcement may include woven webs or webs comprising glass fibers or filaments such that one of ordinary skill would have readily appreciated that the S-Glass reinforcement fabric would have been an appropriate reinforcement for Traser (Ans. 14-15). Any additional arguments made by the Appellant regarding the § 103 rejections, but not explicitly discussed here, have been addressed by the Examiner and are unpersuasive of reversible error for the reasons explained in the Final Office Action or the Answer. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 24 102 Traser 24 1-7, 9-12, 18-21 103 Traser, Akasaka, S- Glass 1-7, 9-12, 18-21 Appeal 2021-005250 Application 15/572,195 7 Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 22 103 Traser, Akasaka 22 23 103 Traser, S-Glass 23 Overall Outcome 1-7, 9-12, 18-24 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)(1)(iv) (2020). AFFIRMED