Ex Parte Feng et al

Patent Trial and Appeal BoardApr 18, 2016

12937923 (P.T.A.B. Apr. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/937,923 10/14/2010 22879 7590 04/20/2016 HP Inc, 3390 E. Harmony Road Mail Stop 35 FORT COLLINS, CO 80528-9544 FIRST NAMED INVENTOR Yi Feng 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 82247390 6509 EXAMINER CHANG, VICTORS ART UNIT PAPER NUMBER 1788 NOTIFICATION DATE DELIVERY MODE 04/20/2016 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): ipa.mail@hp.com barbl@hp.com yvonne.bailey@hp.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte YI FENG, STERLING CHAFFINS, EMMET WHITTAKER, VERONICA A. NELSON, and BRIAN G. RISCH Appeal2014-007151 Application 12/937,923 Technology Center 1700 Before JEFFREY T. SMITH, KAREN M. HASTINGS, and MICHAEL P. COLAIANNI, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. Â§ 134 from a final rejection of claims 1, 2, 5, 6, and 21. We have jurisdiction under 35 U.S.C. Â§ 6. We AFFIRM. Appellants' invention is best illustrated by independent claim 1, reproduced below (emphasis added): Appeal 2014-007151 Application 12/937 ,923 1. An adhesive tape, said adhesive tape comprising: an adhesive material comprising: at least 28% vinyl acetate by weight and between 65% and 72% ethylene by weight disposed on a basefilm at a substantially uniform thickness of up to 18 microns, in which the adhesive material comprises a ratio of ethylene to vinyl acetate such that the adhesive material comprises a melt index of at least 20 g/10 min. The Examiner maintains the following rejections: (a) claims 1, 2, 5, 6, and 21 rejected under 35 U.S.C. Â§ 112, second paragraph, as indefinite for failing to particularly point out and distinctly claim the subject matter which the applicant regards as the invention; and (b) claims 1, 2, 5, 6, and 21 are rejected under 35 U.S.C. Â§ 102(b) as anticipated by or, in the alternative, under 35 U.S.C. Â§ 103(a) as obvious over Farr et al. (US 2003/0052939 Al, published March 20, 2003) ("Farr"). Appellants present arguments only for independent claim 1 in addressing both rejections before us for review on appeal. See Appeal Brief, generally. Accordingly, we select independent claim 1 as representative of the subject matter before us on appeal and limit our discussion to this claim. Claims 2, 5, 6, and 21 will stand or fall with independent claim 1. 2 Appeal 2014-007151 Application 12/937 ,923 OPfNION Rejection under 35 USCÂ§ 112, second paragraph, (indefiniteness) (Rejection (a))1 We REVERSE the Examiner's rejection of claims 1, 2, 5, 6, and 21 under 35 U.S.C. Â§ 112, second paragraph, for the reasons presented by Appellants. We add the following: The Examiner found the language of claim 1 indefinite because the recitation describing the adhesive as comprising ethylene and vinyl acetate monomers is unclear as to what is being claimed, an EV A copolymer or the individual monomers. Ans. 3. According to the Examiner, "it is clearly improper to recite a copolymer EV A comprises 'pre-polymerized constitutes."' Id. at 5. We agree with Appellants that one skilled in the art would readily appreciate the claimed percentages refer to the vinyl acetate and ethylene constituting an ethylene vinyl acetate (EVA) adhesive. 2 App. Br. 9. The Examiner has not adequately explained why one skilled in the art would not have understood, as urged by Appellants in light of their Specification, that the subject matter of independent claim 1 describes an adhesive tape comprising an EV A adhesive material comprising vinyl acetate and ethylene. Accordingly, we reverse the Examiner's rejection under 35 U.S.C. Â§ 112, second paragraph, for the reasons presented by Appellants and given above. 1 For this ground of rejection, we rely on the Examiner's statement of rejection as presented in the Answer. Ans. 2-3. 2 In light of the claim interpretation as set out by Appellants, dependent claim 5 does not further limit claim 1. 3 Appeal 2014-007151 Application 12/937 ,923 Prior Art Rejections (Rejection (b)) We have reviewed each of Appellants' arguments for patentability. However, we determine that, on this record, Appellants have not shown reversible error in the Examiner's prior art rejectionÂ§ 102(b) and/orÂ§ 103(a) of representative independent claim 1. Accordingly, we will sustain the Examiner's prior art rejection for essentially the reasons expressed in the Answer and we add the following for emphasis. Independent claim 1 is directed to an adhesive tape including an adhesive material comprising at least 28% vinyl acetate by weight and between 65% and 72% ethylene by weight. Accordingly, the amount of vinyl acetate ranges from 28% to 35%. The Examiner found Farr discloses an adhesive tape for sealing nozzles comprising a thermoplastic polymer film adhesively bonded to a base film. Final Act. 4; Farr Figure 2, i-f 31. The Examiner found Farr discloses the thermoplastic polymer film includes copolymers of ethylene- vinyl acetate (EVA) with a vinyl acetate content from about 0 to about 40 weight percent. Final Act. 4; Farr i-f 33. The Examiner also found the claimed melt index is met because Farr teaches a sealing tape having generally the same structure/ composition, for the same end use (sealing nozzles) and under the same conditions as the claimed invention. Final Act. 5. Thus, the Examiner determined Farr anticipates or renders obvious the claimed invention. Id. at 4--5. Appellants argue Farr does not anticipate the claimed invention because Farr's preferred vinyl acetate weight percent range of from about 10 to about 25 weight percent is outside the claimed vinyl acetate range of at least 28%. App. Br. 13; Farr i-f 33. Appellants further argue that Farr's 4 Appeal 2014-007151 Application 12/937 ,923 broader disclosed range of vinyl acetate of from about 0 to about 40 weight percent, while overlapping the claimed range for this component, also fails to anticipate the claimed invention because the prior art reference does not teach the claimed 28% value for the vinyl acetate content with sufficient specificity. App. Br. 14; Farr i-f 33. We are unpersuaded by these arguments. In order to anticipate, a reference must identify something falling within the claimed subject matter with sufficient specificity to constitute a description thereof within the purview ofÂ§ 102. In re Schaumann, 572 F.2d 312, 317 (CCPA 1978). It is well established that specific examples of the claimed subject matter are not necessary to establish anticipation. Rather, to anticipate, one skilled in the art must be able to "at once envisage" the claimed subject matter in the prior art disclosure. In re Petering, 301F.2d676, 681(CCPA1962). As acknowledged by Appellants, Farr's disclosed range of from about 10 to about 25 weight percent vinyl acetate is directed to a preferred embodiment within the range taught of up to 40% vinyl acetate in its EV A adhesive. App. Br. 13; Farr i-f 33. A preponderance of the evidence supports the Examiner's finding that one of ordinary skill in the art would have envisaged an EVA with 28 weight percent vinyl acetate as well. As noted by the Examiner and acknowledged by Appellants, Farr's disclosed range of from about 0 to about 40 weight percent completely encompasses the claimed range for the same component. App. Br. 14; Final Act. 4; Ans. 5---6; Farr i-f 33. In re Preda, 401 F.2d 825, 826 (CCPA 1968) (In determining whether a reference anticipates the subject matter recited in a claim, "it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be 5 Appeal 2014-007151 Application 12/937 ,923 expected to draw therefrom."). Not only would the use of 28% vinyl acetate have been immediately envisaged to one of ordinary skill in the art, it also would have been a reasonable inference to one of ordinary skill in the art to use amounts of 28% to up to 40% vinyl acetate. Appellants additionally argue Farr does not define the ratio of ethylene to vinyl acetate "such that the adhesive material comprises a melt index of at least 20 g/10 min." Claim 1; App. Br. 17. We find this conclusory argument unavailing. Appellants have not directed us to any disclosure in their Specification or elsewhere to adequately show why the Examiner's finding that Farr describes useful thermoplastic polymer films, including EV A, having a melt index that encompasses the claimed range of at least 20 g/10 min, is in error. Ans. 1 O; Farr i-f 26. Thus, Appellants have not adequately explained patentable distinction between the claimed invention and Farr. Even assuming arguendo that Farr is not sufficiently specific to anticipate the subject matter of independent claim 1, the claimed invention would still have been obvious to one skilled in the art for the reasons presented by the Examiner. Final Act. 7-8. With respect to the obviousness rejection, Appellants assert unexpected results by the claimed invention based on Examples in the Specification and a common Declaration under 37 C.F.R. 1.132 signed by co-inventors Yi Feng, Sterling Chaffins, and Brian G. Risch (Declaration). 3 App. Br. 15; Declaration 5---6; Spec. Figures 7-8, i-fi-150-59. According to Appellants, this evidence asserts unexpected results in a decrease in overall 3 The Declaration was filed on May 24, 2013 and entered into the record by the Examiner in the Non-final Office Action of July 2, 2013. 6 Appeal 2014-007151 Application 12/937 ,923 adhesion of the adhesive material of the adhesive tape that eliminates tearing or structural damage to the polymer material of a print cartridge when the adhesive tape is removed. App. Br. 15-16. The burden of establishing unexpected results rests on the person who asserts them. Appellants may meet their burden by establishing that the difference between the claimed invention and the closest prior art was an unexpected difference. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). The unexpected results must be established by factual evidence, and attorney statements are insufficient to establish unexpected results. See In re Geisler, 116 F.3d 1465, 1470-71 (Fed. Cir. 1997). Further, a showing of unexpected results supported by factual evidence must be reasonably commensurate in scope with the degree of protection sought by the claims on appeal. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980). We are unpersuaded by this evidence and agree with the Examiner's determination that the evidence is insufficient to establish unexpected results. Ans. 9-11. First of all, all comparative data generated in the Specification is based on a single sample adhesive Tape A as representative of the claimed invention; Tape A having an EV A adhesive layer having 28% by weight vinyl acetate and a melt flow index of 25 g/10 min and cured by irradiation at a level of 120 kGy (12 MRad). Spec. Figures 7-8; i-fi-150-59. Appellants have not adequately explained why this single example is representative of the entire scope of the range of amounts of vinyl acetate, ethylene, melt indices and thicknesses encompassed by independent claim 1. Furthermore, 7 Appeal 2014-007151 Application 12/937 ,923 the adhesive tape of claim 1 may include other adhesives, since the claim recites the open-ended term "said adhesive tape comprising." Second, all comparative data generated in the Specification is against a single sample adhesive Tape B having an EV A adhesive layer having 25% by weight vinyl acetate and a melt flow index of 2 g/10 min and cured by irradiation at a level of 50 kGy (5 MRad). Id. Appellants have not adequately established that disclosed adhesive Tape B is representative of the closest prior art (Farr). Third, as noted by the Examiner, the comparison presented on page 5 of the Declaration between adhesives 3180 and 3155 fails to disclose with specificity the vinyl acetate content of both adhesives. Ans. 11; Deel. 5. Thus, one skilled in the art would be unable to ascertain the significance of the proffered comparison. Even taking into account the additional information furnished in the Reply Brief (adhesive 3180 having a vinyl acetate content of28% and adhesive 3155 having a vinyl acetate content of 15.5%) (Reply Br. 13) is insufficient to assess the significance of the comparison because it is limited to a single inventive sample with a single value (28%) for the vinyl acetate content. On this record, Appellants have not adequately shown, much less explained, why the evidence relied upon would have been unexpected by one of ordinary skill in the art or is reasonably commensurate in the scope with the claims. See, e.g., In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005) ("Even assuming that the results were unexpected, Harris needed to show results covering the scope of the claimed range. Alternatively Harris needed to narrow the claims."); In re Greenfield, 571F.2d1185, 1189 (CCPA 1978). 8 Appeal 2014-007151 Application 12/937 ,923 Therefore, we affirm the Examiner's prior art rejections of claims 1, 2, 5, 6, and 21 for the reasons presented by the Examiner and given above. ORDER The Examiner's rejection of claims 1, 2, 5, 6, and 21under35 U.S.C. Â§ 112, second paragraph (Rejection (a)), is reversed. The Examiner's prior art rejections of claims 1, 2, 5, 6, and 21 under 35 U.S.C. Â§Â§ 102(b) and 103(a) (Rejections (b)) are affirmed. TIME PERIOD No time period for taking any subsequent action in connection with this appeal maybe extended under 37 C.F.R. Â§ 1.136(a)(l). AFFIRMED 9