Ex Parte Curry et al

Patent Trial and Appeal Board

Jan 30, 2017

13723963 (P.T.A.B. Jan. 30, 2017)

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.
13/723,963 12/21/2012 Christopher Lewis Curry 2012EM397 1290
23455 7590 02/01/2017
EXXONMOBIL CHEMICAL COMPANY
5200 BAYWAY DRIVE
P.O. BOX 2149
BAYTOWN, TX 77522-2149
EXAMINER
SHAH, SAMIR
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
02/01/2017 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):
chem.law.prosecution@exxonmobil.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER LEWIS CURRY and
JURGEN JAN MARTHA SCHROEYERS
Appeal 2016-000210
Application 13/723,963
Technology Center 1700
Before GEORGE C. BEST, MONTE T. SQUIRE, and AVELYN M. ROSS,
Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL1
Appellants2 appeal the Examiner’s final rejection of claims 1—5, 9, 13,
14, 16, 19, and 21. 35 U.S.C. § 134(a). We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 In this decision, we refer to the Final Office Action appealed from, mailed
December 15, 2014 (“Final Act.”); the Appeal Brief dated May 12, 2015
(“App. Br.”); the Examiner’s Answer to the Appeal Brief dated July 24,
2015 (“Ans.”); and the Reply Brief (“Reply Br.”) dated September 24, 2015.
2 Appellants identify ExxonMobil Chemical Company as the Real Party in
Interest. App. Br. 3.
Appeal 2016-000210
Application 13/723,963
The Claimed Invention
Appellants’ disclosure relates to hot melt pressure-sensitive adhesive
compositions and their applications and, in particular, to adhesive
compositions comprising a propylene-based polymer component. Spec. 12;
Abstract. Claim 1 is illustrative of the claims on appeal and is reproduced
below from the Claims Appendix to the Appeal Brief (App. Br. 14, 15) (key
disputed limitations italicized):
1. A hot melt pressure-sensitive adhesive composition
consisting essentially of.
(1) a propylene-based polymer component consisting of
about 60 to about 98 wt % propylene and from about 2 to about
40 wt % of one or more of ethylene and C4-C10 alpha-olefins,
based on the weight of the propylene-based polymer
component, the propylene-based polymer component having a
melting point less than or equal to about 130°C and a triad
tacticity greater than about 75%;
(2) from about 35 to about 50 wt% of a hydrocarbon
tackifier resin based on the weight of the hot melt pressure
sensitive adhesive;
(3) from about 15 to about 30 wt% of a process oil based
on the weight of the hot melt pressure-sensitive adhesive; and
(4) less than 0.01 wt % total of silicon oils and waxes;
wherein the hot melt pressure-sensitive adhesive composition
1 s free of a block copolymer wherein the block copolymer
comprises styrene, and wherein an adhesive tape comprising the
hot melt pressure sensitive adhesive composition at a coating
weight of 20 g/m2 has an initial 180° peel strength of the tape
on polyethylene film of from 0.1 to about 10 N/25 mm; and
wherein the adhesive composition has a clear visual
determination, wherein the visual determination consists of
providing a testing square consisting of a piece of white 20
pound weight paper having a brightness of 90%, the testing
square having a printed portion comprising the capital letters
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"O" and "Q" printed with a laser printer to be visually
distinguishable at 1 space apart from each other thereon in
black text using 10-point Helvetica font; depositing a sample of
the hot melt pressure-sensitive adhesive composition at a
temperature above the melting point of the hot melt pressure-
sensitive adhesive composition onto the testing square using a
flat applicator to cover the printed portion of the testing square
with a film of the hot melt pressure-sensitive adhesive
composition having a thickness of 1 mm, followed by allowing
the hot melt pressure-sensitive adhesive composition to cool to
a temperature of 25°C to produce a prepared test sample; and
visually determining the clarity of the prepared test sample
wherein the prepared test sample has a clear visual
determination when an observer having essentially 20:20 vision
is able to visually distinguish the letter "O" from the letter "Q"
in the printed portion of the testing square at a distance of about
30 cm from the prepared test sample at an illumination of 1000
lux.
The Reference
The Examiner relies on the following prior art reference as evidence
in rejecting the claims on appeal:
Tseetal., US 2007/0021566 A1 Jan. 25,2007
(hereinafter “Tse”)
The Rejection
On appeal, the Examiner maintains the following rejection: Claims 1—
5, 9, 13, 14, 16, 19, and 21 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Tse. Final Act. 2.
OPINION
Having considered the respective positions advanced by the Examiner
and Appellants in light of this appeal record, we affirm the Examiner’s
rejection for the reasons set forth in the Answer to the Appeal Brief and
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Application 13/723,963
Final Office Action appealed from, which we adopt as our own. We
highlight and address specific findings and arguments for emphasis as
follows.
Appellants argue claims 1—5, 9, 13, 14, 16, 19, and 21 as a group. We
select claim 1 as representative and the remaining claims stand or fall with
claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Tse teaches an adhesive composition
satisfying all of the limitations of claim 1 and concludes that the reference
would have rendered claim 1 obvious. Final Act. 2-4 (citing Tse 24, 135,
145,447^149, 467).
Appellants argue that the Examiner’s rejection of claim 1 should be
reversed because the claimed “adhesive composition excludes a functional
component.” App. Br. 9 (emphasis in original). In particular, Appellants
argue that the transition phrase “consists of’ is used to describe the claimed
propylene-based polymer component and thus, “excludes any element not
specified in the claim.” Id. at 9. Appellants further argue that the claim uses
the transition phrase “consisting essentially of’ to describe the adhesive
composition and thus, “limits the scope of the invention to elements listed
and elements that do not materially affect the basic and novel characteristics
of the invention.” Id. (emphasis in original).
Appellants rely principally on co-applicant Jurgen J.M. Schroeyers’s
Declaration (“Schroeyers Declaration”) to establish that the presence of a
functional component in the adhesive composition “materially affects'1'’ the
basic and novel characteristics of the invention. App. Br. 9 (emphasis in
original). In particular, Appellants contend that the Schroeyers Declaration
shows that the “the presence of a functional component in an adhesive
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Application 13/723,963
affects the modulus G’ and surface tension of the adhesive composition.”
Id.
Appellants also contend that the Examiner’s rejection should be
reversed because “Tse requires a functional component” and “read in its
entirety . . . directs one of ordinary s[k]ill in the art to include a functional
component in the adhesive composition.” App. Br. 10, 12 (emphasis in
original). In particular, Appellants argue that (1) “the functional group-free
polymers disclosed in Tse are not suitable as an adhesive” {id. at 10);
(2) “the term ‘may’ at Paragraph [0069] of Tse is not used to teach the
presence or absence of a functional component” {id. at 11); and (3) the
“inventive examples of Tse all recite the requirement of a functionalized
polymer component” {id. at 11).
We are not persuaded by Appellants’ arguments. On the record
before us, we find that a preponderance of the evidence and sound technical
reasoning support the Examiner’s obviousness conclusion and finding that
Tse teaches all of the limitations of claim 1. Tse Abstract, 1124, 69,135,
145, 447-449, 467,481,482.
Appellants’ argument that the claimed “adhesive composition
excludes a functional component” (App. Br. 9) is not persuasive because, as
the Examiner notes (Ans. 2), the claims do not recite that the adhesive
composition is “free” of a functional component. Rather, as the Examiner
correctly points out (Ans. 2), the phrase “consisting essentially of’ includes
not only those materials specifically recited in the claim, but also any other
materials which do not materially affect the basic and novel characteristics
of the claimed invention. In re Herz, 537 F.2d 549, 551—52 (CCPA 1976)
(quoting In re Janakirama-Rao, 317 F.2d 951 (CCPA 1963)). Thus,
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Appellants have the burden of showing that the additional ingredient taught
by the prior art reference, i.e., a functional component, materially affects the
basic and novel characteristics of the claimed adhesive composition. See In
reDeLajarte, 337 F.2d 870, 873-74 (CCPA 1964).
On this record, Appellants have failed to meet their burden.
Appellants do not provide or direct us to persuasive evidence that the
addition of a functional component as taught by Tse materially affects the
basic and novel characteristics of the claimed adhesive composition. Herz,
537 F.2d at 551-52 (explaining that if an ingredient is not detrimental to the
desired properties of a claimed composition, it is not considered as a
material that materially affects the basic and novel characteristics of the
claimed composition).
We do not find the Schroeyers Declaration persuasive because it is
conclusory and unsupported by sufficient evidence in the record. See, e.g.,
Schroeyers Decl. 13; see also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir.
1984); cf. In re Bulina, 362 F.2d 555, 559 (CCPA 1966) (“[A]n affidavit by
an applicant or co-applicant as to the advantages of his invention is less
persuasive than one made by a disinterested person.”). In particular, the
declaration does not provide any experimental results or cite to any
verifiable sources as the bases for Schroeyers’s opinions and disagreement
with the Examiner’s factual findings in this regard. Appellants’ naked
assertion that “the presence of a functional component in an adhesive affects
the modulus G’ and surface tension of the adhesive composition” (App. Br.
9), without more, is insufficient establish reversible error in the Examiner’s
analysis and findings.
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We do not find Appellants’ arguments that Tse requires a functional
component and directs one of ordinary skill to include a functional
component in the adhesive composition (App. Br. 10, 12) persuasive for the
well-stated reasons provided by the Examiner at pages 3 through 5 of the
Answer.
In particular, we concur with the Examiner’s reading of Tse’s 1 69
and the Examiner’s conclusion (Ans. 3, 4) that, in light of Tse’s disclosure
that the adhesive composition “may comprise” the functionalized polymer
component, it would have been obvious to one of ordinary skill in the art to
choose to include or not include a functionalized polymer component in the
composition. Tse | 69 (disclosing that “the adhesive composition of the
present invention may comprise . . . the functionalized polymer component”
and that “[pjreferably, the functionalized polymer component is present in
the adhesive composition of the present invention”); cf. also In re Susi, 440
F.2d 442, 446 n.3 (CCPA 1971) (explaining that preferred embodiments do
not constitute a teaching away from a broader disclosure or non-preferred
embodiments). Appellants’ argument exposes no reversible error in the
Examiner’s factual findings in this regard.
Appellants’ argument that the “inventive examples of Tse all recite
the requirement of a functionalized polymer component” (App. Br. 11) is
equally unpersuasive because “a reference is not limited to the disclosure of
specific working examples.” In re Mills, 470 F.2d 649, 651 (CCPA 1972);
see also Susi, 440 F.2d at 446 n.3 (explaining that disclosed examples do not
necessarily constitute a teaching away from a reference’s broader
disclosure). As the Examiner finds (Ans. 5) and previously discussed above,
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Tse teaches that the functional component is, indeed, an optional component
in the disclosed composition.
We do not find Appellants’ contention that the functional group-free
polymers disclosed in Tse are not suitable as an adhesive (App. Br. 10)
persuasive because it is conclusory and Appellants do not provide an
adequate technical explanation or direct us to sufficient evidence—whether
in Tse or elsewhere in the record—to support it, or otherwise establish
reversible error in the Examiner’s analysis and findings. De Blauwe, 736
F.2d at 705.
Accordingly, we affirm the Examiner’s rejection of claims 1—5, 9, 13,
14, 16, 19, and 21 under pre-AIA 35 U.S.C. § 103(a) as unpatentable over
Tse.
DECISION/ORDER
The Examiner’s rejection of claims 1—5, 9, 13, 14, 16, 19, and 21 is
affirmed.
It is ordered that the Examiner’s decision 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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