Ex Parte Curry et alDownload PDFPatent Trial and Appeal BoardJan 30, 201713723963 (P.T.A.B. Jan. 30, 2017) Copy Citation 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 2 Appeal 2016-000210 Application 13/723,963 "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 3 Appeal 2016-000210 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 4 Appeal 2016-000210 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, 5 Appeal 2016-000210 Application 13/723,963 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. 6 Appeal 2016-000210 Application 13/723,963 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, 7 Appeal 2016-000210 Application 13/723,963 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 8 Copy with citationCopy as parenthetical citation