Ex Parte Schümann et al

Patent Trial and Appeal Board

Jan 4, 2019

14640835 (P.T.A.B. Jan. 4, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/640,835 03/06/2015
27384 7590 01/04/2019
Briscoe, Kurt G.
Norris McLaughlin, PA
875 Third Avenue, 8th Floor
New York, NY 10022
FIRST NAMED INVENTOR
Uwe Schumann
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.
101769-730 2672
EXAMINER
NGUYEN, VU ANH
ART UNIT PAPER NUMBER
1762
MAIL DATE DELIVERY MODE
01/04/2019 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 UWE SCHUMANN, SEBASTIAN DIETZE,
KAI ELLRINGMANN, MARCO KUPSKY, and THILO DOLLASE
Appeal2018-003019
Application 14/640,835
Technology Center 1700
Before CATHERINE Q. TIMM, JENNIFER R. GUPTA, and
JANEE. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner's decision to finally reject claims 1-9 and 11-242. We have
jurisdiction over this appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
STATEMENT OF THE CASE
Appellant's invention is generally directed to a primer composition
that improves the adhesion of tapes to hydrophilic surfaces, such as glass.
1 Appellant is the Applicant, Tesa SE, which, according to the Appeal Brief,
is the real party in interest. Appeal Brief filed September 12, 201 7 ("Br."),
2.
2 Final Office Action entered March 13, 2017 ("Final Act.").
Appeal2018-003019
Application 14/640,835
Spec. 1, 11. 1-2. Independent claims 1 and 20 illustrate the subject matter on
appeal and are reproduced below with contested language italicized:
1. A primer comprising a mixture dissolved or dispersed in
one or more organic solvents which solvents is isopropanol or
which contains isopropanol, the mixture comprising:
one or more organofunctional silanes; and,
a copolymer obtained through the free-radical
copolymerization, of vinylcaprolactam and/or vinylpyrrolidone,
and one or more of the following monomers:
a) an acrylic acid ester of a linear primary alcohol
containing 2 to 10 carbon atoms in the alkyl group of the
alcohol,
b) an acrylic acid ester of a branched, non-cyclic alcohol
having 4 to 12 carbon atoms in the alkyl group of the alcohol,
c) acrylic acid, and
wherein the primer is free of chlorinated polyolefins.
20. A primer comprising a mixture dissolved or dispersed in
one or more organic solvents which solvent is isopropanol or
which contains isopropanol, the mixture comprising:
a copolymer obtained through copolymerization of
vinylcaprolactam and/or vinylpyrrolidone, and one or more of
the following monomers:
a) an acrylic acid ester of a linear primary alcohol
containing 2 to 10 carbon atoms in the alkyl group of the
alcohol,
b) an acrylic acid ester of a branched, non-cyclic alcohol
having 4 to 12 carbon atoms in the alkyl group of the alcohol,
c) acrylic acid; and,
one or more organofunctional silanes selected from the
group consisting of vinyl-functional, amino-functional and
glycydoxy-functional silanes.
Claims Appendix filed October 6, 2017 ( emphasis added).
The Examiner maintains the following rejections in the Examiner's
Answer entered November 1, 2017("Ans."):
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Application 14/640,835
I. Claims 1-7, 11, 12, and 14--19 under 35 U.S.C. § I03(a) as
unpatentable over Groves (US 5,677,376, issued October 14, 1997) in view
of Ogawa et al. (US 2008/0032055 Al, published February 7, 2008);
II. Claims 8, 9, and 20-24 under 35 U.S.C. § I03(a) as
unpatentable over Groves in view of Ogawa and Ilkka et al.
(US 2005/0081993 Al, published April 21, 2005); and
III. Claim 13 under 35 U.S.C. § I03(a) as unpatentable over Groves
in view of Ogawa and Zhang (US 6,984,287 B2, issued January 10, 2006).
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellant's contentions, we affirm the Examiner's rejections of
claims 1-9 and 11-24 under 35 U.S.C. § I03(a) for the reasons set forth in
the Final Action, the Answer, and below.
We review appealed rejections for reversible error based on the
arguments and evidence Appellant provides for each ground of rejection
Appellant contests. 3 7 C.F .R. § 41.3 7 ( c )( 1 )(iv); 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) (explaining that even if the examiner
had failed to make a prima facie case, "it has long been the Board's practice
to require an applicant to identify the alleged error in the examiner's
rejections")).
Rejection I
Appellant argues claims 1-7, 11, 12, and 14--19 as a group. Br. 5-9.
We accordingly select claim 1 as representative, and decide the appeal as to
claims 1-7, 11, 12, and 14--19 based on claim 1 alone. 37 C.F.R.
§ 4I.37(c)(l)(iv).
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Application 14/640,835
Groves discloses polymer blends that that can be used as primers and
comprise a modified block copolymer and a polymer comprising a
polymerization reaction product of two or more mono-ethylenically
unsaturated monomers in which at least one of the monomers is an acrylic or
methacrylic acid ester of a non-tertiary alcohol having 1 to 14 carbon atoms,
and at least one of the monomers is a nitrogen-containing monomer. Col. 1,
11. 24--40; col. 2, 11-18. Groves discloses that preferred polymer blends
include a blend of maleated styrene-ethylene/butylene-styrene block
copolymer and iso-octyl acrylate/N-vinylcaprolactam/acrylic acid polymer
(corresponding to a copolymer as recited in claim 1). Col. 3, 11. 52-56.
Groves discloses that additives such as silanes and chlorinated polyolefins
may be included in the polymer blends. Col. 4, 11. 45--46.
Example 1 of Groves describes a process for preparing a polymer
blend that involves dissolving a block copolymer and a terpolymer
consisting of iso-octyl acrylate/N-vinylcaprolactam/acrylic acid
( corresponding to a copolymer as recited in claim 1) in a solvent blend of
cyclohexane, xylene, and ethanol. Col. 8, 11. 20-61. Example 15 of Groves
describes a process for preparing a primer solution that involves adding
chlorinated polypropylene, a silane coupling agent, and triethanolamine
titanate to the polymer blend of Example 1, and diluting the solution with a
solvent mixture of cyclohexane, xylene, and ethanol. Col. 11, 11. 23-36.
The Examiner finds that "Groves discloses all the limitations set forth
in claim 1 but fails to exemplify a primer containing the polymer blend, the
solvents and the silane coupling agent but is free of chlorinated polyolefins."
Ans. 3--4 (citing Groves Abstract; col. 3; col. 4, 11. 45--46; Example 15). The
Examiner finds, however, that Ogawa discloses that chlorinated polyolefin
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Application 14/640,835
resins produce pollutive gas, such as dioxin, and discloses use of a non-
chlorinated polyolefin resin in a primer composition to avoid the pollutive
effect of chlorinated polyolefins. Ans. 4 ( citing Ogawa Abstract; ,r 5). The
Examiner concludes that "it would have been obvious to a person having
ordinary skill in the art at the time the instant invention was made to have
modified the primer taught by Groves by doing away with the optional
chlorinated polyolefins so as to render the primer more health-friendly and
environment-friendly." Ans. 4.
Appellant argues that the only compositions disclosed in Groves that
include a silane-the compositions of Examples 15 and 24---necessarily also
include a chlorinated polypropylene. Br. 6. Appellant argues that one of
ordinary skill in the art would have known that chlorinated polyolefins
provide a significant adhesion-promoting effect in primers, and omission of
a chlorinated polyolefin from Groves' compositions, therefore, would have
been illogical and contrary to what one of ordinary skill in the art would
have considered doing. Br. 6-7.
Appellant's arguments, however, do not take into consideration
Groves' disclosures as a whole, which are not limited to Examples 15 and
24. In re Fracalossi, 691 F.2d 792, 9974 n.1 (CCPA 1982) (explaining that
a prior art disclosure is not limited to its examples); In re Applied Materials,
Inc., 692 F.3d 1289, 1298 (Fed. Cir. 2012) ("A reference must be considered
for everything that it teaches, not simply the described invention or a
preferred embodiment."). As discussed above, Groves broadly discloses that
additives such as silanes and chlorinated polyolefins may be included in the
polymer blends described in the reference, indicating that inclusion of such
components in the polymer blends is optional. We find no disclosure in
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Groves indicating that a cholorinated polyolefin must be included in the
polymer blends described in the reference. Nor do we find any disclosure in
Groves indicating that a silane must be used in combination with a
chlorinated polyolefin. As also discussed above, Ogawa discloses that
cholorinated polyolefin resins produce pollutive gas, and teaches using non-
chlorinated polyolefin resins in primer compositions to avoid the pollutive
effect of chlorinated polyolefins. In view of a combination of Groves' and
Ogawa's disclosures as a whole, one of ordinary skill in the art may have
included a silane in Groves' polymer blend, but would have omitted
chlorinated polyolefins from the composition based on Ogawa's disclosure
that cholorinated polyolefin resins produce pollutive gas, and Groves'
indication that cholorinated polyolefins are an optional component of
Groves' polymer blends.
Although Appellant argues that one of ordinary skill in the art would
have known that chlorinated polyolefins provide a significant adhesion-
promoting effect in primers, and therefore would not have omitted a
chlorinated polyolefin from Groves' polymer blend, on this appeal record,
Appellant does not provide any evidence to support this assertion. It is well-
established that unsupported attorney arguments cannot take the place of
evidence necessary to resolve a disputed question of fact. In re Geisler, 116
F.3d 1465, 1470 (Fed. Cir. 1997) ("An assertion of what seems to follow
from common experience is just attorney argument and not the kind of
factual evidence that is required to rebut a prima facie case of
obviousness."); Icon Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034,
1043 (Fed. Cir. 2017) ("[a]ttorney argument is not evidence" and cannot
rebut other admitted evidence)
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Appellant argues that "even when considered jointly with Groves,
neither Ogawa [ n ]or Groves make any mention of isopropanol as an organic
solvent in the primer." Br. 7. Appellant argues that "the primer of Ogawa is
aqueous and is not based on an organic solvent which is, or which
necessarily includes, isopropanol." Id.
As discussed above, however, regardless of whether Ogawa discloses
an aqueous solvent, Groves describes preparing a primer solution that
includes, in part, a terpolymer consisting of iso-octyl acrylate/N-
vinylcaprolactam/acrylic acid (corresponding to a copolymer as recited in
claim 1 ), a silane coupling agent, and an organic solvent blend of
cyclohexane, xylene, and ethanol. Although the solvent blend disclosed in
Groves includes ethanol rather than isopropanol as recited in claim 1, one of
ordinary skill in the art reasonably would have understood that isopropanol
would be suitable for use in Groves' solvent blend due to its close structural
similarity to ethanol, and the resulting expectation that isopropanol would
have properties similar to those of ethanol. In re Payne, 606 F.2d 303, 313
(CCP A 1979) ("An obviousness rejection based on similarity in chemical
structure and function entails the motivation of one skilled in the art to make
a claimed compound, in the expectation that compounds similar in structure
will have similar properties."); In re Deuel, 51 F. 3d 1552, 1558 (Fed. Cir.
1995) ("Structural relationships may provide the requisite motivation or
suggestion to modify known compounds to obtain new compounds. For
example, a prior art compound may suggest its homologs because homologs
often have similar properties and therefore chemists of ordinary skill would
ordinarily contemplate making them to try to obtain compounds with
improved properties.").
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Accordingly, Groves' disclosure of an organic solvent blend including
ethanol for a primer composition renders use of isopropanol in such a
solvent blend prima facie obvious. In re Dillon, 919 F. 2d 688, 692 (Fed.
Cir. 1990) ("[S]tructural similarity between claimed and prior art subject
matter ... where the prior art gives reason or motivation to make the
claimed compositions, creates a prima facie case of obviousness, and [] the
burden (and opportunity) then falls on an applicant to rebut that prima facie
case."). We find no evidence on this appeal record establishing the
criticality of using an isopropanol solvent, or a solvent that contains
isopropanol, in the primer composition recited in claim 1. In fact,
Appellant's Specification indicates that "[p ]articularly suitable solvents for
the primer of the present invention are alcohols or solvents containing
alcohols, wherein a single alcohol or a mixture of two or more alcohols can
be used. Among alcohols, isopropanol has proven to be particularly
advantageous." Spec. 12, 11. 1--4. Thus, the Specification indicates that all
alcohols are suitable for use as the solvent in Appellant's primer.
Appellant argues that Ogawa discloses a primer formed with an
aqueous solvent, while the primer disclosed in Groves includes an organic
solvent. Br. 7-8. Appellant argues that one of ordinary skill in the art
would have understood that "organic compounds such as the chlorinated
polyolefins of Groves would be readily soluble in organic solvents, but such
chlorinated polyolefins are less soluble in aqueous systems." Br. 8.
Appellant contends that the "different solvent systems of Groves and Ogawa
indicate fundamental incompatibility," such that combination of the
references is improper. Br. 7-8.
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Application 14/640,835
As discussed above, however, the Examiner's rejection is not based
on a combination of the primer compositions, or components of the
compositions, disclosed in Groves and Ogawa. Rather, the Examiner relies
on Ogawa's disclosure of using a non-chlorinated polyolefin resin in a
primer composition due to the fact that cholorinated polyolefin resins
produce pollutive gas, such as dioxin, thus providing a reason to omit
cholorinated polyolefins from the primer composition disclosed in Groves.
Appellant argues that "[ u ]nexpectedly ... the present inventors have
realized a remarkable improvement in that the claimed primer composition
provides for omission of chlorinated polyolefins with little or no loss of
adhesion-promoting properties." Br. 9.
Appellant, however, does not direct us to any evidence whatsoever in
support of this assertion of unexpected results. Br. 8-9. "It is well settled
that unexpected results must be established by factual evidence. 'Mere
argument or conclusory statements in the specification does not suffice."'
Geisler at 1470 (quoting In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir.
1994)); see also In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974)
("Attorney's argument in a brief cannot take the place of evidence.").
Accordingly, Appellant's unsupported argument does not meet the
burden of establishing that the primer recited in claim 1 imparts results that
would have been unexpected to one of ordinary skill in the art at the time of
Appellant's invention relative to the closest prior art----Groves. In re Klosak,
455 F.2d 1077, 1080 (CCPA 1972) ("the burden of showing unexpected
results rests on he who asserts them"); In re Baxter Travenol Labs., 952 F.2d
388, 392 (Fed. Cir. 1991) ("[W]hen unexpected results are used as evidence
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Application 14/640,835
of nonobviousness, the results must be shown to be unexpected compared
with the closest prior art.").
Considering the totality of the evidence relied-upon in this appeal, a
preponderance of the evidence weighs in favor of the Examiner's conclusion
of obviousness. We accordingly sustain the Examiner's rejection of
claims 1-7, 11, 12, and 14--19 under 35 U.S.C. § 103(a).
Rejection II
Appellant presents arguments for claims 8, 9, and 20-24 based on
limitations included in both independent claim 20 and claim 1, from which
claims 8 and 9 depend. Br. 9-12. We accordingly select claim 20 as
representative, and decide the appeal as to claims 8, 9, and 20-24 based on
claim 20 alone. 37 C.F.R. § 4I.37(c)(l)(iv).
Independent claim 20 recites a primer comprising, in part, one or
more organofunctional silanes selected from the group consisting of: vinyl-
functional, amino-functional and glycydoxy-functional silanes.
Appellant argues that neither Groves nor Ogawa disclose silanes
having vinyl-functional, amino-functional, and glycydoxy-functional
moieties. Br. 9-10. The Examiner, however, finds that although Groves
discloses including silanes in the polymer blends described in the reference,
"Groves fails to teach a glycidoxy- or amino- or vinyl-functional silane,"
and the Examiner relies on Ilkka for suggesting this feature. Ans. 4--5.
Because Appellant's arguments are directed to Groves and Ogawa, and do
not address the relied-upon disclosures in Ilkka, Appellant's arguments are
unpersuasive of reversible error in the Examiner's rejection of claim 20.
Appellant further repeats many of the arguments presented for
claim 1, and argues that Ilkka does not overcome the shortcomings of
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Groves and Ogawa. Br. 10-12. Because we are unpersuaded of reversible
error in the Examiner's rejection of claim 1 for the reasons discussed above,
Appellant's arguments for claim 20 are also without merit.
We accordingly sustain the Examiner's rejection of claims 8, 9, and
20-24 under 35 U.S.C. § 103(a).
Rejection III
To address this rejection, Appellant repeats many of the arguments
presented for claim 1, and argues that Zhang does not overcome the
shortcomings of Groves and Ogawa. Br. 12-13. Because we are
unpersuaded of reversible error in the Examiner's rejection of claim 1 for the
reasons discussed above, Appellant's position as to this rejection is also
without merit. We accordingly sustain the Examiner's rejection of claim 13
under 35 U.S.C. § 103(a).
DECISION
We affirm the Examiner's rejections of claims 1-9 and 11-24 under
35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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