Ex Parte Adams

Patent Trial and Appeal Board

Mar 9, 2018

13787177 (P.T.A.B. Mar. 9, 2018)

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.
13/787,177 03/06/2013 Brian K. Adams 098986.022374 1040
75534 7590 03/13/2018
R AKFR fr TTOSTRTT FR T T P
EXAMINER
CIRA CENTER, 12th FLOOR DULKO, MARTA S
2929 ARCH STREET
PHILADELPHIA, PA 19104 ART UNIT PAPER NUMBER
1746
NOTIFICATION DATE DELIVERY MODE
03/13/2018 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):
eofficemonitor@bakerlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN K. ADAMS
Appeal 2017-006494
Application 13/787,177
Technology Center 1700
Before ROMULO H. DELMENDO, CHRISTOPHER C. KENNEDY, and
DEBRA L. DENNETT, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicant (hereinafter “Appellant”)1 appeals under 35 U.S.C.
§ 134(a) from the Primary Examiner’s final decision to reject claims 1—4 and
6—13.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The Appellant is the Applicant, Nordson Corporation, which, according
to the Brief, is the real party in interest (Appeal Brief filed March 6, 2016,
hereinafter “Appeal Br.,” 2).
2 Appeal Br. 3—9; Reply Brief filed March 13, 2017, hereinafter “Reply Br.,”
2—5; Final Office Action entered October 6, 2015, hereinafter “Final Act.,”
2—8; Examiner’s Answer entered January 13, 2017, hereinafter “Ans.,” 2-4.
Appeal 2017-006494
Application 13/787,177
I. BACKGROUND
The subject matter on appeal relates to a method for applying a
foamed hot melt adhesive to various components of a disposable absorbent
personal hygiene product (Specification filed March 6, 2013, hereinafter
“Spec.,” 12). Representative claim 1 is reproduced from the Claims
Appendix to the Appeal Brief (Appeal Br.), with key limitations
emphasized, as follows:
1. A method of manufacturing a disposable absorbent
personal hygiene product including a stretched elastic strand and
a first flat substrate portion, the method comprising:
mixing a pressurized gas and hot melt adhesive to form
a foamed adhesive',
discharging a filament of the foamed adhesive toward the
stretched elastic strand;
impacting the discharged filament of foamed adhesive
with high velocity process air to move the filament of foamed
adhesive;
depositing the filament of foamed adhesive onto the
stretched elastic strand;
expanding the foamed adhesive in volume during flight
and after deposit onto the stretched elastic strand; and
securing the stretched elastic strand to the first flat
substrate portion with the foamed adhesive.
II. REJECTION ON APPEAL
On appeal, the Examiner maintains a rejection under pre-AIA 35
U.S.C. § 103(a) of claims 1—4 and 6—13 as unpatentable over Harris (US
2003/0173018 Al, published September 18, 2003) in view of McDaniel (US
4,256,526, issued March 17, 1981) (Ans. 2-4; Final Act. 2—8).
III. DISCUSSION
The Appellant does not argue any claim separately pursuant to the
requirements set forth in 37 C.F.R. § 41.37(c)(l)(iv) (Appeal Br. 3—9).
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Application 13/787,177
Therefore, as provided by this rule, we confine our discussion to claim 1,
which we select as representative. Dependent claims 2-4 and 6—13, the only
other claims on appeal, stand or fall with claim l.3
The Examiner finds that Harris describes a method including every
limitation recited in claim 1, except for the specified step of “mixing a
pressurized gas and hot melt adhesive to form a foamed adhesive” (Final
Act. 2) (“Harris describes substantially all the limitations of the instant claim
1, except for the step of mixing adhesive with gas and adhesive being
foamed.”). The Examiner finds further, however, that McDaniel teaches the
preference of using a foamed adhesive over non-foamed adhesives in a
method for manufacturing a disposable absorbent personal hygiene product
(Final Act. 2—3). Based on these findings, the Examiner concludes that “[i]t
would have been obvious to one ordinary skill in the art... to have modified
the method of Harris by using foamed adhesive instead of non-foamed, as
described by McDaniel, because such modification would have predictably
allow[ed] increase[d] adhesive strength of the bond” (id. at 3).
The Appellant contends that a person of ordinary skill would not have
combined Harris with McDaniel because “the foam adhesive teachings of
McDaniel were not considered appropriate for applying hot melt adhesive to
elastic strands” (Appeal Br. 3). Specifically, the Appellant argues that “the
teachings of McDaniel in combination with Harris were long believed to be
an inoperable combination that would undermine the dispensing operation
3 The mere statement that the prior art references do not “disclose or
render obvious the combination of features recited in . . . dependent claims
\2—\ and 6—13]” (Appeal Br. 9) does not amount to an argument for separate
patentability requiring our separate consideration. Cf. In re Lovin, 652 F.3d
1349, 1356-57 (Fed. Cir. 2011).
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Application 13/787,177
for providing accurate adhesive deposits onto elastic strands” and that “the
benefits alleged to be achieved by references like McDaniel were not
relevant in the context of applying adhesive to elastic strands” {id. at 3—4).
According to the Appellant, McDaniel teaches forming foamed adhesive
lines in both parallel and perpendicular directions relative to the substrate’s
movement direction and, in such an operation, “a significant or majority
portion of the adhesive would miss the elastic strand and would therefore
become wasted material”—i.e., it would result in “fly” and/or “shot”
problems {id. at 5). In the Appellant’s view, McDaniel’s operation
undermines Harris’s method, which provides discrete bond points along the
elastic strand with separated masses of adhesive {id. at 6). Additionally, the
Appellant argues that “reducing the density of the filament by foaming the
adhesive would inherently and negatively affect the ability for the process
air to carefully control the filament during flight” and that using high
velocity process air in an uncontrolled manner would result in “fly” and/or
“shot” problems leading to low creep resistance and/or poor edge control {id.
at 6—7; underlining omitted). In support, the Appellant relies on the
Specification (e.g., Ill) and Mr. George Pais’s Declaration pursuant to 37
C.F.R. § 1.132 filed August 21, 2015 (Evidence Appendix, hereinafter “Pais
Deck,” H3—5).4 The Appellant urges that the Pais Declaration provides
evidence of unexpected results (Appeal Br. 8) (relying on Pais Decl. 1 6).
4 Mr. Pais states (Pais Decl. 11):
I . . . was an engineer and product line manager for
Nordson Corporation (now retired from this position). In the
course of my employment, I helped test the effectiveness of
methods for dispensing foamed adhesive onto stretched elastic
strands, which is the subject matter recited in the claims of U.S.
Patent Application No. 13/787,177 ....
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Application 13/787,177
The Examiner responds that the prior art references contradict the
Appellant’s arguments and points out that the Appellant did not support its
arguments with objective evidence—i.e., evidence other than mere
statements in the Specification and Declaration (Ans. 3). Regarding air
velocity, the Examiner responds that the Appellant did not “provide any
standard for determining the velocity of the air to exclude [the velocities
disclosed or suggested in] the prior art teachings” (id.). Finally, the
Examiner points out that the Appellant did not provide any objective
evidence (prior art or experimental laboratory reports) to support the alleged
unexpected results (id. at 4).
The Appellant’s arguments and proffered evidence are insufficient to
identify any reversible error in the Examiner’s rejection. In re Jung, 637
F.3d 1356, 1365 (Fed. Cir. 2011).
Harris describes a method for securing elastic strands to flat substrates
in hygienic article (e.g., diaper) production by applying continuous hot melt
adhesive filaments to one or more elastic strands with a plurality of air jets
and then securing them to flat substrates (Harris ^fl[ 2—6). Although Harris
teaches a preferred embodiment in which the adhesive is dispensed in a swirl
pattern, it does not otherwise place any particular limitation as to the
adhesive form’s pattern (id. H 3, 4, 6, 10-12, 33 (“the filament 13 is
discharged in a pattern that forms discrete areas or masses of adhesive which
may form solid dots 30 of adhesive that may or may not be connected by
thinner filament sections”), 39; Figs. 1, 7—11). Thus, we agree with the
Examiner’s finding (Final Act. 2) that Harris’s method differs from a
method encompassed by claim 1 only in that a foamed hot melt adhesive
prepared by mixing a pressurized gas with the hot melt adhesive is not used.
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Application 13/787,177
McDaniel teaches a method for applying a foamed hot melt adhesive
prepared by mixing and pressurizing an inert gas with a hot melt adhesive to
a substrate (e.g., a disposable diaper lamina) while the substrate is moving
relative to an applicator station (McDaniel, col. 1,11. 9-13; col. 3,1. 65—col.
4,1. 24). McDaniel states that “it is possible to apply hot melt adhesive in a
pattern having lines both parallel to and perpendicular to the direction of
substrate movement” {id. at col. 5,11. 52—55 (emphasis added); Fig. 8). In
addition, McDaniel teaches that it is “possible to apply sharply defined lines
having a width as small as A inch by this technique, even to substrates
running at rates of more than 1 foot per second in the direction across the
line” by using short timed bursts (col. 2,11. 56—68; col. 3,11. 18-46).
According to McDaniel, a foamed hot melt adhesive provides “a great
improvement over non-foam hot melt systems[] in respect to open time” and
“the adhesive strength of a bond achieved with a given quantity of a given
hot melt adhesive is appreciably improved and in most instances will be
doubled if the adhesive is applied as a cellular foam rather than as a
conventional non-foam adhesive” (col. 4,11. 31^44).
Given these teachings in the prior art references, we agree with the
Examiner that a person of ordinary skill in the art would have been found it
obvious to use a foamed hot melt adhesive in Harris’s method with a
reasonable expectation of achieving improved open time and improved bond
strength as suggested by McDaniel. KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 417 (2007) (“[I]f a technique has been used to improve one device, and
a person of ordinary skill in the art would recognize that it would improve
similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill.”).
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We agree with the Examiner’s assessment that the Appellant’s
argument and evidence regarding the alleged “fly” and/or “shot” problems
are entitled to little probative weight. Consistent with the Examiner’s
position (Ans. 3), neither the inventor’s Specification nor the Pais
Declaration contains objective evidence that an adhesive pattern in the form
of parallel and perpendicular lines would be unsuitable in Harris’s method.
To the contrary, the Appellant’s citations to Harris (Appeal Br. 4, citing,
e.g., Harris 133) do not place any limitation on the adhesive’s particular
pattern other than the requirement that “the filament 13 is discharged in a
pattern that forms discrete areas or masses of adhesive which may form solid
dots 30 of adhesive that may or may not be connected by thinner filament
sections” (Harris 133). Indeed, the Specification and Pais’s Declaration
contain only conclusory statements without discussing or explaining—in a
meaningful way—the actual teachings found in Harris and McDaniel, as we
recounted above. For example, Mr. Pais states that the “uncontrollable
nature of adhesive filaments leads to ‘fly’ and ‘shot’ problems, which are
inaccurate applications of adhesive that waste material and adversely affect
bonding characteristics” (Pais Decl. 13). Both Harris and McDaniel,
however, indicate that a person of ordinary skill in the art would have
routinely controlled the adhesive application (Harris H 33, 37; McDaniel
col. 3,11. 5—46). Moreover, Mr. Pais does not direct us to any experimental
evidence that substantiates, quantitatively, the degree of adverse effect on
the bonding characteristics. In re Am. Acad. ofSci. Tech Ctr., 367 F.3d
1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the
declarations and conclude that the lack of factual corroboration warrants
discounting the opinions expressed in the declarations.”); Velander v.
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Application 13/787,177
Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (“In giving more weight to
prior publications than to subsequent conclusory statements by experts, the
Board acted well within [its] discretion.”); In re Lindner, 457 F.2d 506, 508
(CCPA 1972) (“[M]ere conclusory statements in the specification and
affidavits are entitled to little weight when the Patent Office questions the
efficacy of those statements.”).
Similarly, neither the Specification nor the Pais Declaration contains a
meaningful discussion on why the nozzles and pressures used in Harris (e.g.,
33, 37) and McDaniel (e.g., col. 7,11. 43^47) would not be considered as
“high velocity process air,” as broadly recited in claim 1. Nor, as the
Examiner points out (Ans. 4), does the Appellant’s relied-upon evidence
contain any objective evidence (e.g., sworn comparative experimental
results) to substantiate the allegation that unexpected results are achieved
over the closest prior art.
For these reasons, we sustain the Examiner’s rejection of claim 1.
IV. SUMMARY
The Examiner’s rejection under 35 U.S.C. § 103(a) of claims 1^4 and
6—13 as unpatentable over Harris in view of McDaniel is sustained.
Therefore, the Examiner’s final decision to reject claims 1—4 and 6—13 is
affirmed.
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
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