Ex Parte Mao et al

Patent Trial and Appeal Board

Aug 3, 2017

13246889 (P.T.A.B. Aug. 3, 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.
13/246,889 09/28/2011 Zhiqiang Mao 70301 4699
21898 7590 08/07/2017
ROHM AND HAAS COMPANY
c/o The Dow Chemical Company
P.O. Box 1967
2040 Dow Center
Midland, MI 48641
EXAMINER
HUANG, CHENG YUAN
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
08/07/2017 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):
FFUIMPC@dow.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ZHIQIANG MAO, ZHAOHUI QU, YIN XUE,
HUIXIAN YANG, and MIAO YANG
Appeal 2016-006879
Application 13/246,889
Technology Center 1700
Before TERRY J. OWENS, MARK NAGUMO, and
MERRELL C. CASHION, Jr., Administrative Patent Judges.
Opinion for the Board by OWENS, Administrative Patent Judge.
Opinion dissenting by NAGUMO, Administrative Patent Judge.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’
rejection of claims 1—11. We have jurisdiction under 35 U.S.C. § 6(b).
Appeal 2016-006879
Application 13/246,889
The Invention
The Appellants claim a polyvinyl chloride film backed with a water
based pressure sensitive adhesive. Claim 1 is illustrative:
1. A polyvinyl chloride film backed with water based pressure
sensitive adhesive, wherein said water based pressure sensitive
adhesive comprises a copolymer by copolymerization of a
monomer mixture comprising, in percentage by weight based on
the dry weight of the copolymer,
a) from 30wt% to less than 70wt% acrylic acid C4-C8-
alkylester, and
b) from 2wt% to 9wt% (meth)acrylonitrile, wherein the
polyvinyl chloride film is not corona treated.
The References
Samour US 3,492,260 Jan. 27, 1970
McClintic US 2007/0215271 A1 Sept. 27, 2007
Tosaki EP 1 340 797 A2 Sep. 3,2003
The Rejections
The claims stand rejected under 35 U.S.C. § 103 as follows: claims 1—
3 and 5—11 over McClintic in view of Samour, and claim 4 over McClintic
in view of Samour and Tosaki.
OPINION
We affirm the rejections.
The Appellants argue the claims as a group (Br. 3—5). Although an
additional reference is applied in the rejection of claim 4, the Appellants do
not provide a substantive argument as to the separate patentability of that
claim (id.). We therefore limit our discussion to one claim, i.e., claim 1,
which is the sole independent claim. Claims 3—11 stand or fall with that
claim. See 37 C.F.R. § 41.37(c)(l)(iv) (2012).
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McClintic discloses a covering article (100) comprising a base
layer (110) and an adhesive layer (120) (120; Fig. 1). The base layer (110)
can be polyvinyl chloride flflf 23, 35) and the adhesive layer (120) can be a
continuous layer of pressure sensitive emulsion-based adhesive made from
monomers which can include C4—Cio alkyl(meth)acrylates and acrylonitriles
(11 53, 56, 60, 63).
Samour discloses emulsion-based pressure sensitive adhesive
polymers made from monomers including about 30-95 wt% C1-C10 alkyl
(meth)acrylates and about 15 wt% or less of monomers which can be
(meth)acrylonitriles (col. 1,11. 25—32; col. 3,11. 43—58; col. 3,1. 74 —col. 4,
1. 2; col. 6,11. 26—28). The pressure sensitive adhesion can exhibit “no
splitting at elevated temperatures during peel adhesion, good or improved
creep resistance and a satisfactory level of tack and adhesion” (col. 9,11. 41—
44).
The Appellants argue that “using less than 70 weight % of the acrylic
acid C4-C8-alkylester is required in order to obtain the desired properties of
tack, peel, plasticizer migration resistance (PMR) and removability” (Br. 4)
and that “Applicant’s comparative examples 6 and 7 which use 72 weight
percent and 71.5 weight percent, respectively, of the acrylic acid C4-C8-
alkylester clearly demonstrate the criticality of the 70 weight % limitation”
(id. ). The Appellants also argue that in the Declaration under
37 C.F.R. § 1.132 of Miao Yang, Comparative Examples A and B show that
test compositions containing 1 and 10 wt%, respectively, of acrylonitrile do
not demonstrate desirable properties, “therefore demonstrating the criticality
of 2wt% to 9wt% (meth)acrylonitrile as claimed in the instant Application”
(id.), whereas “Inventive Example 1 [which] tests a composition having
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50wt% of EHA [2-ethylhexyl acrylate] and 6wt% AN [acrylonitrile]. . . .
demonstrates desirable properties at another point in the instant
Application’s claimed 30wt% to less than 70wt% acrylic acid C4-C8-
alkylester range” (id. ).
As stated in In re Peterson, 315 F.3d 1325, 1329-30 (Fed. Cir. 2003):
In cases involving overlapping ranges, we and our predecessor
court have consistently held that even a slight overlap in range
establishes a prima facie case of obviousness ....
Selecting a narrow range from within a somewhat broader
range disclosed in a prior art reference is no less obvious than
identifying a range that simply overlaps a disclosed range. In
fact, when as here, the claimed ranges are completely
encompassed by the prior art, the conclusion is even more
compelling than in cases of mere overlap. [(Citations
omitted.)]
Samour’s range of about 30-95 wt% Ci-Cio (meth)acrylate (col. 3,1. 74
— col. 4,1. 2; col. 6,11. 26—28) encompasses the Appellants’ range of 30 to
less than 70 wt% acrylic acid C4—C8—alkylester, and Samour’s range of no
more than about 15 wt% (meth)acrylonitrile (col. 3,11. 43—58) encompasses
the Appellants’ range of 2 to 9 wt% (meth)acrylonitrile. Consequently, use
of acrylic acid C4—C8—alkylester and (meth)acrylonitrile in amounts within
the Appellants’ recited ranges would have been prima facie obvious to one
of ordinary skill in the art.
The Appellants’ recognition that the use of certain amounts of acrylic
acid C4—C8—alkylester and (meth)acrylonitrile results in particular desirable
properties (Br. 4—5) does not patentably distinguish the Appellants’ recited
composition over the same composition suggested by the applied references
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Application 13/246,889
which, due to being the same composition, would have the same properties.
See In re Papesch, 315 F.2d 381, 391 (CCPA 1963) (“From the standpoint
of patent law, a compound and all of its properties are inseparable; they are
one and the same thing”).
Accordingly, we are not persuaded of reversible error in the
rejections.
The dissenter asserts that the majority erred as a matter of law in not
explaining why Samour’s range of about 30-95 wt% Ci-Cio (meth)acrylate
(col. 3,1. 74— col. 4,1. 2; col. 6,11. 26—28) is not somewhat broader than the
Appellants’ range of 30 to less than 70 wt% acrylic acid C4—C8—alkylester,
and why Samour’s range of no more than about 15 wt% (meth)acrylonitrile
(col. 3,11. 43—58) is not somewhat broader than the Appellants’ range of 2 to
9 wt% (meth)acrylonitrile (Dissent 2—3). No explanation appears to be
required. The dissenter appears to be of the view that the disclosure in the
Yang Declaration that comparative compositions A and B show a total of
three below-threshold results indicates that Samour’s range is not somewhat
broader than the Appellants’ range (Dissent 2—3), but why that is so is not
apparent.
The dissenter asserts that “[t]he conclusion that a prior disclosure of a
range of compositions renders obvious all embodiments within that range
rests on the presumption that all compositions within that range are
substantially the same, or differ in a manner predictable based on the
disclosure in the prior art” (Dissent 4). The dissenter does not explain, and it
is not apparent, how the same compositions within an overlapping or
encompassing range can have different properties, or why the same
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compositions within such a range should be presumed to be the same as
compositions outside the range.
The dissenter asserts that “[w]hile the evidence of criticality in this
case might not be enough in the face of a more substantial case of prima
facie obviousness, we must address the case before us, not some potential, as
yet hypothetical case” (Dissent 4). The Appellants assert that they have
shown “criticality” (App. Br. 4) but do not establish unexpected results by
providing a side-by-side comparison, commensurate in scope with the
claims, of the claimed invention with the closest prior art and explaining
why the results would have been unexpected by one of ordinary skill in the
art. See In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991); In
re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); In re Grasselli, 713 F.2d
731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA
1980); In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973); In re Klosak, 455
F.2d 1077, 1080 (CCPA 1972).
The dissenter, therefore, does not persuade us of the alleged legal
error in our analysis.
DECISION/ORDER
The rejections under 35 U.S.C. § 103 of claims 1—3 and 5—11 over
McClintic in view of S amour, and claim 4 over McClintic in view of
Samour and Tosaki are 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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Application 13/246,889
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ZHIQIANG MAO, ZHAOHUI QU, YIN XUE,
HUIXIAN YANG, and MIAO YANG
Appeal 2016-006879
Application 13/246,889
Technology Center 1700
Opinion dissenting by NAGUMO, Administrative Patent Judge.
I dissent, respectfully, because I find the evidence brought forward by
the Examiner favoring obviousness less weighty than the evidence of
unexpected results brought forward by Appellants favoring non­
obviousness. Moreover, in my judgment, the arguments against that
evidence raised by the Examiner are not persuasive, and those raised by the
Majority amount to the application of a per se rule of unpatentability and
hence are wrong as a matter of law.
The entire case of prima facie obviousness raised by the Examiner
rests on the disclosure by Samour of an encompassing range of Ci-Cio alkyl
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(meth)acrylate esters (about 30-95 wt%) and an encompassing range of
(meth)acrylonitrile (no more than about 15 wt%).1
The passage from Peterson quoted by the Majority is apt, but it has
been, in my judgment, misapplied by failing to give adequate consideration
to the proviso that “[sjelecting a narrow range from within a somewhat
broader range disclosed in a prior art reference is no less obvious than
identifying a range that simply overlaps a disclosed range.” 315 F.3d
at 1330, underscore added.
Here, the Specification provides evidence regarding the effect of
amounts of Cg acrylates just outside the upper limit of 70 wt%. (Spec. 10.)
Comparative Example 6 has 72 wt% ethylhexyl acrylate (EHA), and
Comparative Example 7 has 71.5 wt% combined EHA and butyl acrylate.
{Id. at Table 1.) Both yield apparently significantly inferior results, i.e., at
least one property value below “threshold.” {Id. at Table 3.) Similarly,
Dr. Yang provides evidence in the Declaration under Rule 132 that PVC
films with pressure sensitive adhesives based on 1 % (Comparative A)
and 10% (Comparative B) acrylonitrile are distinctly inferior to films with
PSAs based on 8 wt% and 6 wt% acrylonitrile. (The compositions of
Comparative A and Comparative B are similar to the composition of
Example 1 in the Specification (Spec. 10, Table 1).)
The Majority cite this evidence (Op. 3), but dismiss it without
substantive analysis, merely applying the general observation enunciated by
1 Whether Samour may disclose more narrow ranges of alkyl ester and
(meth)acrylonitrile content is irrelevant to the consideration of the rejection
from which this appeal has been taken.
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the predecessor to our reviewing court that a compound and its properties
are inseparable as a matter of patent law. This evidence indicates, however,
that the encompassing ranges disclosed by Samour (about 30-95 wt% Ci_io
(meth)acrylic esters, and less than about 15 wt% monomers including
(meth)acrylonitrile) are more than merely “somewhat broader” than the
enclosed range recited in the appealed claims. It is, in my view, legal error
to dismiss such evidence without explaining why it is not persuasive.
At least the Examiner, having found that the evidence in the
Specification and the evidence provided by Dr. Yang are not commensurate
in scope with the claimed subject matter, did not err in this way. The
Examiner, however, has not explained why the showings at 66.5 wt% EHA
(Example 1), 64 wt% EHA (Example 3), and 62 wt% EHA (Examples 2, 4,
and 5), and 50 wt% EHA (Yang Inventive 1), which give values at or above
threshold, are inadequate to establish, reasonably, criticality of the 70 wt%
upper limit of C4 8-alkyl acrylate ester against the 71.5 wt% and 72 wt%
comparatives, which give at least one value below threshold. While it is true
there are no values testing the lower limit of 30 wt% alkyl acrylate ester,
Dr. Yang’s Comparative A (1 wt% acrylonitrile) and Comparative B
(10 wt% acrylonitrile) yield at least one sub-threshold value for
compositions that are otherwise roughly comparable to Example 1 in the
Specification.
The Majority maintains that “[n]o explanation appears to be required.”
(Op. 5.) An explanation is required because the underlying issue is factual.
Hence, the weight of evidence derived from a physical measurement
(adhesive properties at various monomer contents) over an inference derived
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from a legal theory (evidence must be commensurate in scope with the
claimed subject matter) cannot be evaluated merely by insisting that the
legal theory must be satisfied. Rather, why the evidence proffered is not
close enough to the boundary—a question of fact—must be explained. The
Majority urge further that it is “not apparent” why Dr. Yang’s Declaration
indicates that Samour’s range of < 15 wt% (meth)acrylonitrile is not
[merely] somewhat broader than the range of 2—8 wt%. (Id.) If the entire
range provided pressure sensitive adhesives having substantially the same
results, or results that varied in a simple, monotonic fashion while providing
an acceptable level of adhesiveness, it would be reasonable to conclude that
Samour teaches or suggests the narrower ranges within the broad range.
This conclusion, on the present record, is the expected result. To insist, as
do the Majority (id.) that the finding that the expected result is not what
actually happens (there is no challenge to the accuracy of Dr. Yang’s
testimony) doesn’t matter because the result is inherent in the composition is
to leap over the step of weighing evidence of expected results over evidence
of unexpected results. Other evidence might cause one to discount the
contribution of Dr. Yang’s testimony—but a legal theory is not evidence.
The quantum of evidence required to undermine establishment of a
prima facie case of obviousness is simply the preponderance of evidence
regarding patentability. Here, the evidence advanced by the Examiner and
the Majority is merely the encompassing overlapping range. Against that
evidence is evidence that the upper range of the alkyl ester content above
about 70 wt% disclosed by the prior art is distinct and inferior to alkyl ester
content less than 70 wt%. Moreover, the Declaration of Dr. Yang indicates
that the range of (meth)acrylonitrile content of less than 15 wt% is not a
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single range, but is in fact three ranges, only the middle of which is
satisfactory. The conclusion that a prior disclosure of a range of
compositions renders obvious all embodiments within that range rests on the
presumption that all compositions within that range are substantially the
same, or differ in a manner predictable based on the disclosure in the prior
art. When evidence arises that brings that presumption into question, the
conclusion of obviousness must be re-evaluated. In this case, the “re-
evaluation” by the Majority has been limited to a non-critical recitation of a
general principle that overlooks or misapprehends the evidence that an
underlying assumption is not correct.
While the evidence of criticality in this case might not be enough in
the face of a more substantial case of prima facie obviousness, we must
address the case before us, not some potential, as yet hypothetical case.
On the present record, I would reverse the rejection advanced by the
Examiner. Accordingly, I dissent, respectfully, from the affirmance of that
rejection.
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