Ex Parte Husemann et al

Patent Trial and Appeal Board

Nov 8, 2012

10533831 (P.T.A.B. Nov. 8, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/533,831 11/10/2005 Marc Husemann 101769-311-WCG 6112
27386 7590 11/09/2012
GERSTENZANG, WILLIAM C.
NORRIS MCLAUGHLIN & MARCUS, PA
875 THIRD AVE, 8TH FLOOR
NEW YORK, NY 10022
EXAMINER
DESAI, ANISH P
ART UNIT PAPER NUMBER
1788
MAIL DATE DELIVERY MODE
11/09/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_________________

Ex parte MARC HUSEMANN and STEPHAN ZOLLNER
_________________

Appeal 2011-009287
Application 10/533,831
Technology Center 1700
_________________

Before HUBERT C. LORIN, KAREN M. HASTINGS, and
DEBORAH KATZ, Administrative Patent Judges.

KATZ, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-009287
Application 10/533,831

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Appellants1 seek our review, under 35 U.S.C. § 134(a), of the
Examiner’s decision to reject claims 1 and 3-16. (App. Br. 2.) Claims 2, 17,
and 18 were cancelled previously. (Id.) We have jurisdiction under
35 U.S.C. § 6(b). An oral argument was held on November 2, 2012.
We affirm.
The Examiner rejected claims 1, 3, 4, 6, 7, 9, 11, and 12 under
35 U.S.C. § 103(a) over Maruoka,2 in view of Spada3 and McLaughlin.4
(Ans. 4-7.) The Examiner also entered rejections against dependent claims
over these references, and further in view of additional references, as
follows: claims 8 and 16 further in view of Massow5 (Ans. 7-8); claims 5
and 13-15 further in view of Khieu6 (Ans. 8-9); and claim 10 further in view
of Everaerts.7 (Ans. 9-10).
Appellants put forth the same arguments against the rejection of all of
the claims in each of the groups, arguing only that the additional references
cited do not cure the alleged deficiencies of Maruoka, Spada, and
McLaughlin. (See App. Br. 9-10.) We focus on claim 1 in our review. See
37 C.F.R. § 41.37(c)(1)(vii).

1 The real party in interest is said to be tesa SE. (App. Br. 1.)
2 Maruoka, et al., U.S. Patent 5,252,395, issued October 12, 1993.
3 Spada, et al., U.S. Patent 6,293,037 B1, issued September 25, 2001.
4 McLaughlin and Caldwell, U.S. Patent 6,365,793 B1, issued April 2, 2002.
5 Massow, et al., U.S. Patent 5,194,455, issued March 16, 1993.
6 Khieu, et al., WO 98/24978, published June 11, 1998.
7 Everaerts et al., U.S. Patent 5,612,136, issued March 18, 1997.
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Application 10/533,831

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Appellants’ claims are directed to pressure-sensitive adhesive.
Appellants’ claim 1 recites:
A polyacrylate-based pressure-sensitive adhesive
comprising a polymer formed from a monomer mixture
comprising:
a) 60% to 85% by weight, based on the weight of
monomer mixture, of acrylic and/or methacrylic esters having
the formula CH2 = C(R1)(COOR2),
where R1 = H or CH3 and R2 is a linear or branched alkyl
radical having 1 to 14 carbon atoms, and
b) 10% to 40% by weight of isobornyl acrylate units,
based on the monomer mixture,
wherein said pressure sensitive adhesive further
comprises aluminum (III) acetylacetonate, and the polymer has
a glass transition temperature (TgA) greater than or equal to
30oC and has a bond strength on steel in a tolerance range of
±15% in a peel-rate range of 0.1 cm/min to 100 m/min.

(App. Br. 12, Claims App’x.)
The Examiner finds, and Appellants do not dispute, that the teachings
of Maruoka as modified by the teachings of Spada render obvious a pressure
sensitive adhesive comprising the monomeric unit acrylic ester and
isobornyl acrylate units recited in claim 1. (See Ans. 4-5; Maruoka, 3:35-40,
5:5-20, and 5:40-65; Spada, 3:15-25.)
The Examiner also finds that Maruoka teaches using agents to
crosslink the pressure sensitive adhesives composition (Maruoka, 10:33-34),
but does not specifically teach aluminum (III) acetylacetonate. (Ans. 5-6.)
The Examiner cites McLaughlin for the teaching of aluminum (III)
acetylacetonate to crosslink pressure-sensitive adhesive compositions. (Id.
at 6; McLaughlin, 7:5-10.) The Examiner finds that those in the art would
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Application 10/533,831

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have added a cross-linker to the polymer of Maruoka, as modified by Spada,
to provide suitable cohesiveness. (Ans. 6.)
Appellants raise two issues on appeal. First, Appellants argue that
those of skill in the art could not have reasonably expected that the
specifically claimed crosslinker would have worked with the specifically
claimed polymer to produce a satisfactory pressure sensitive adhesive
because they are of different polarities. (App. Br. 4.) Appellants present the
Declaration of inventor Marc Husemann in support of this argument.
According to Dr. Husemann, the recited crosslinking agent, aluminum (III)
acetylacetonate, is polar and the recited polymer is apolar, due to its
relatively high amount of isobornyl acrylate units. (Declaration Under
37 C.F.R. § 1.132 of Marc Husemann, ¶¶ 1-5.) Dr. Husemann explains
further that those of ordinary skill in the art would have expected the
combination of an apolar polymer and a polar crosslinking agent to increase
the wetting surface of the adhesive, which would result in a permanent
adhesive, instead of an adhesive suitable for removal. (Id. ¶ 6.) Dr.
Husemann states that it was unexpected that the claimed adhesive exhibited
low wetting behavior and was able to be easily removed. (Id. ¶ 7.)
The preponderance of the evidence persuades us that the claimed
pressure-sensitive adhesive would have been obvious.
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this leads
to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense. In that
instance the fact that a combination was obvious to try might
show that it was obvious under § 103.
Appeal 2011-009287
Application 10/533,831

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KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). Maruoka teaches
that it was known to use crosslinkers in pressure sensitive adhesives and
Spada teaches that aluminum (III) acetylacetonate is a crosslinker used in
adhesives. Though Dr. Husemann states that it was expected that a
combination of the claimed monomer combination and aluminum (III)
acetylacetonate could not be crosslinked homogeneously and would not be a
suitable pressure sensitive adhesive, he does not support his statements with
outside evidence. Dr. Husemann admits that a pressure-sensitive adhesive
can be made when the polymer and crosslinker are of different polarity, but
qualifies this by stating that the adhesive will be a permanent adhesive, not
“suitable for removability.” (Declaration Under 37 C.F.R. § 1.132 of Marc
Husemann, ¶ 6.) Appellants’ claims recite a specific range of bond
strengths, which may indicate a certain amount of removability, but
Appellants have not provided or directed us to an explanation of how this
bond strength correlates to the degree of removability Dr. Husemann
considers to be “suitable” and not permanent.8 (Id.) Thus, we are not
persuaded that the pressure sensitive adhesive, as claimed, would not have

8 Appellants’ Specification discloses: “A disadvantage of these [prior art]
pressure-sensitive adhesives is that polyacrylates as a general rule are
relatively polar (owing to multiplicity of ester moieties) and therefore
develop polar interactions with the substrate. As a result there is an increase,
over time, in the bond strength, and the pressure-sensitive adhesive tape is
difficult to remove.” (Spec., 1:14-18.) This discussion does not explain
how much increase in bond strength causes the adhesive to become difficult
to remove. Furthermore, this passage tends to indicate that the polarity of
the polymer as compared to the substrate, not as compared to the crosslinker,
determines removability.
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been obvious from the combination of the crosslinker of McLaughlin and the
polymer of Maruoka, as modified by Spada.
To the extent Appellants are arguing that the claimed pressure
sensitive adhesive had an unexpected degree of removability, Appellants
have not provided sufficient evidence. In the Reply Brief, Appellants point
to the data in their Specification, which reportedly shows a minimal increase
in bond strength over time (Reply Br. 2), but Appellants do not present this
data as a comparison with the closest prior art. See In re Baxter Travenol
Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) (“when unexpected results are
used as evidence of nonobviousness, the results must be shown to be
unexpected compared with the closest prior art.”). Furthermore, the data in
Appellants’ Specification compares two different crosslinkers, aluminum
(III) acetylacetonate and glycidyl methacrylate in reference example R2, but
does not indicate the polarity of glycidyl methacrylate. (See Spec., 21:12-
16.) Appellants’ Specification reports only that glycidyl methacrylate
causes a “scatter in bond strengths as a function of peel rate from 2.1 to 3.1
N/cm.” (Id. at 21: 12-16.) It is not clear how this result relates to
removability. Accordingly, we are not persuaded that the degree of
removability exhibited by the combination of polymer and crosslinker
claimed would have been unexpected by those in the art at the time of the
invention.
Appellants also argue that the Examiner failed to provide an
articulated reasoning of why one of skill in the art would have combined the
teachings of the prior art. (App. Br. 7-8.) Because the Examiner found that
the polymer of Maruoka would have been modified by using the isobornyl
acrylate taught in Spada because of its low odor and toxicity (Ans. 5) and
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Application 10/533,831

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would have used a crosslinker as taught in M arouka and McLaughlin to
provide cohesiveness (id. at 6), we are not persuaded by Appellants’
argument.
Appellants have not provided sufficient argument or evidence to
persuade us that the Examiner’s decision to reject the claims should be
reversed.

Conclusion
Upon consideration of the record and for the reasons given, we sustain
the Examiner’s rejection of claims 1 and 3-16 under 35 U.S.C. § 103(a).
Therefore, we affirm the decision of the Examiner.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.

AFFIRMED

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