Ex Parte Keite-Telgenbüscher et al

Patent Trial and Appeal BoardFeb 14, 2019

13517927 (P.T.A.B. Feb. 14, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/517,927 08/28/2012 27384 7590 02/15/2019 Briscoe, Kurt G. Norris McLaughlin, PA 875 Third Avenue, 8th Floor New York, NY 10022 FIRST NAMED INVENTOR Klaus Keite-Telgenbtischer 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. 101769-644 3184 EXAMINER BRADFORD, ELIZABETH ART UNIT PAPER NUMBER 1746 MAIL DATE DELIVERY MODE 02/15/2019 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 KLAUS KEITE-TELGENBUSHER, HANS KARL ENGELDINGER, and JUDITH GRUNAUER Appeal2018-003715 Application 13/517,927 Technology Center 1700 Before CATHERINE Q. TIMM, JEFFREYB. ROBERTSON, and BRIAN D. RANGE, Administrative Patent Judges. RANGE, Administrative Patent Judge. DECISION ON APPEAL SUMMARY Appellants 1 appeal under 35 U.S.C. Â§ 134(a) from the Examiner's decision rejecting claims 2--4, 7, and 9--20. We have jurisdiction. 35 U.S.C. Â§ 6(b ). We AFFIRM. 1 According to Appellants, the real party in interest is TESA SE. Appeal Br. 2. Appeal 2018-003715 Application 13/517,927 STATEMENT OF THE CASE2 Appellants describe the invention as relating to adhesively bonding two substrates with heat activation. Spec. 1: 8-11. The invention seeks high strength bonds that could be used, for example, with electronic devices such as cell phones. Id. at 1:15-2:9. Claim 7, 3 reproduced below, is illustrative of the claimed subject matter: 7. A method for adhesively bonding and reparting two substrate surfaces, the method comprising: applying a heat-activatedly bondable sheetlike element into a bondline between two substrates, wherein the heat- activatedly bondable sheetlike element comprises at least one electrically conductive sheetlike structure and at least two layers of different heat-activatable adhesives, wherein a first heat- activatable adhesive layer is located substantially on a first side of the electrically conductive sheetlike structure and a second heat-activatable adhesive is located substantially on a second side of the electrically conductive sheetlike structure, wherein the two substrates are plastic substrates and the first heat- activatable adhesive layer is based on a first nitrile rubber/phenolic resin; bonding the two substrates together, to form an adhesively bonded assembly, by subjecting the heat-activatedly bondable sheetlike element to a first temperature T 1 at which there is simultaneous heat activation of the first and second heat-activatable adhesives; and 2 In this Decision, we refer to the Specification filed Jun. 20, 2012 ("Spec."), Final Office Action dated December 14, 2016 ("Final Act."), the Appeal Brief filed August 9, 2017 ("Appeal Br."), the Examiner's Answer dated December 27, 2017 ("Ans."), and the Reply Brief filed February 23, 2018 ("Reply Br."). 3 Claim 7 is the first-listed independent claim because claims 2, 3, and 4 depend from claim 7. 2 Appeal 2018-003715 Application 13/517,927 reparting the adhesively bonded assembly by subjecting the bondline to a second temperature T 2 at which, under mandated conditions, only one of the first and second heat-activatable layers of the heat-activatedly bondable sheetlike element loses its adhesive effect in the adhesively bonded assembly to an extent such that the adhesively bonded assembly is separated, wherein the two substrates are part of a portable consumer electronics device. Appeal Br. 12-13 (Claims App.). REFERENCES The Examiner relies upon the prior art below in rejecting the claims on appeal: Hirata us 5,354,393 Oct. 11, 1994 Extrand et al., US 2005/0274455 Al Dec. 15, 2005 ("Extrand") Shimizu et al., JP2001-262085 (A) March 15, 2000 ("Shimizu") Kawate et al., WO 00/40648 July 13, 2000 ("Kawate") Osuga JP2001354915 (A) Dec. 25, 2001 REJECTIONS The following rejections are before us on appeal: Rejection 1. Claims 2--4, 7, 9-14, 19, and 20 under 35 U.S.C. Â§ I03(a) as unpatentable over Osuga in view of Shimizu, Extrand, Kawate, and Hirata. Final Act. 2. 4 4 In the Final Office Action, the Examiner's first sentence stating the rejection does not reference claim 19, but the Examiner addresses claim 19 in the next paragraph of the rejection. Final Act. 2. The discussion of claim 19 provided Appellants notice that claim 19 was rejected. Thus, we include claim 19 in our statement of the rejection. 3 Appeal 2018-003715 Application 13/517,927 Rejection 2. Claims 15-18 under 35 U.S.C. Â§ I03(a) as unpatentable over ShilllZu in view Extrand, Kawate, and Hirata. Final Act. 7. 5 ANALYSIS We review the appealed rejections for error based upon the issues identified by Appellants and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential), cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) ("[I]t has long been the Board's practice to require an applicant to identify the alleged error in the examiner's rejections."). After considering the evidence presented in this Appeal and each of Appellants' arguments, we are not persuaded that Appellants identify reversible error. Thus, we affirm the Examiner's rejections for the reasons expressed in the Final Office Action and the Answer. We add the following primarily for emphasis. The Appellants do not separately argue any claim. We therefore limit our discussion to claim 7. The remaining claims stand or fall with that claim. 37 C.F.R. Â§ 4I.37(c)(l)(iv) (2013). The Examiner rejects claim 7 under 35 U.S.C. Â§ 103 as unpatentable over Osuga in view of Shimizu, Extrand, Kawate, and Hirata. Final Act. 2. The Examiner finds that the references teach each recitation of claim 7 and provides rationales as to why the teachings of each reference would have been combined. Id. at 2-7 (providing citations to each reference). Because 5 The Examiner has withdrawn the optional and alternative rationale relying on Cho et al., US 2011/0076434 Al, Mar. 31, 2011. 4 Appeal 2018-003715 Application 13/517,927 Appellants do not dispute most of the Examiner's findings and conclusions, we focus on Appellants' arguments. Appellants argue that claim 7 is directed to an adhesion method but Hirata teaches a heat-seal process that does not include a separate adhesive. Appeal Br. 8. The Examiner, however, relies on Osuga as teaching the recited two layers ofheat-activatable adhesives. Final Act. 2-3. The Examiner relies on Hirata "solely to enhance the rejection of the prior art by providing evidence that applying such a HF [high-frequency] method to the bonding surfaces of small (portable) components would have held the expectation of success." Ans. 3; see also id. at 4 ("the method and materials of Hirata are not being relied upon in the current rejection"). Appellants' argument is therefore unpersuasive because it addresses only Hirata rather than addressing the Examiner's rejection which is based upon the references' combined teachings. "Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references." In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Appellants also argue that there would be no reason to make the two cassette cases of Harata releasable from each other and no reason to use heat-activatable resins with Harata. Appeal Br. 8-9; Reply Br. 4--5. The Examiner, however, determines that, for example, use of heat-activatable resins as taught by Osuga and use ofbonding/rebonding as taught by Kawate would predictably result in the ability to easily recycle components by allowing increased ease of separation. Final Act. 6 ( citing Kawate ). Appellants do not persuasively argue why the Examiner's stated reason to combine the teachings of the references is incorrect. Rather, cassettes such 5 Appeal 2018-003715 Application 13/517,927 as those taught by Hirata typically include a variety of different materials (Hirata Abstract, 1 :20-34 ), and Kawate teaches that debonding/removing the adhesive of such devices can facilitate recycling (Kawate 3:1--4; 9:18-12:8). The Examiner's rationale as to why a person of skill in the art would have applied the debonding techniques to portable consumer electronics devices such as the device of Hirata is thus supported by a preponderance of the evidence. Because Appellants' arguments do not identify reversible error, we sustain the Examiner's rejection. DECISION For the above reasons, we affirm the Examiner's rejections of claims 2--4, 7, and 9-20. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). AFFIRMED 6