Ex Parte Yoda

Patent Trials and Appeals BoardJun 21, 2019

15120132 - (D) (P.T.A.B. Jun. 21, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 15/120, 132 08/19/2016 32692 7590 06/25/2019 3M INNOVATIVE PROPERTIES COMPANY PO BOX 33427 ST. PAUL, MN 55133-3427 FIRST NAMED INVENTOR Masaki Yoda 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. 75043US007 8447 EXAMINER USELDING, JOHN E ART UNIT PAPER NUMBER 1763 NOTIFICATION DATE DELIVERY MODE 06/25/2019 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): LegalUSDocketing@mmm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MASAKI YODA Appeal 2018-008960 Application 15/120,132 Technology Center 1700 Before MICHAEL P. COLAIANNI, N. WHITNEY WILSON, and DEBRA L. DENNETT, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. Â§ 134(a) the final rejections of claims 1-15. We have jurisdiction over the appeal pursuant to 35 U.S.C. Â§ 6(b). We AFFIRM. 1 Appellant identifies 3M Company and its affiliate 3M Innovative Properties Co. as the real parties in interest (Appeal Br. 2). Appeal 2018-008960 Application 15/120,132 STATEMENT OF THE CASE Appellant's invention is directed to a pressure-sensitive adhesive which bonds polyolefinssuch as polypropylene, despite the low surface energy of these materials. (Spec. 1 :5-12). Claim 1 is illustrative ( emphasis added): I. A pressure-sensitive adhesive comprising a tacky adhesive polymer and a chlorinated polyolefin; a heat of fusion of the chlorinated polyolefin being O Jig, and a content of chlorine in the chlorinated polyolefin being 16 to 25 mass %. Appeal Br. 10 (Claims App.). Appellant appeals the following rejections: I. Claims 1-4, 6, 7, 10, and 12 are rejected under 35 U.S.C. Â§ 103 as unpatentable over Momchilovich et al. (US 5,840,783; issued Nov. 24, 1998, "Momchilovich") in view of Masumoto et al. (JP 2004- 217807 A; published Aug. 5, 2004, and relying on a machine translation dated Mar. 6, 2016, "Masumoto"). II. Claims 5, 8, 9, 11, and 13-15 are rejected under 35 U.S.C. Â§ 103 as unpatentable over Momchilovich in view of Masumoto, and further in view of Chang et al. (US 2006/0159915 A 1; published July 20, 2006, "Chang"). Appellant does not argue any of the dependent claims separately (Appeal Br. 2-4; Reply Br. 2-5). We select independent claim 1 as representative. Because no dependent claims are argued separately, the 2 Appeal 2018-008960 Application 15/120,132 dependent claims will stand or fall with our analysis of the rejection of claim 1. 37 C.F.R. Â§ 41.37(c)(l)(iv). FINDINGS OF FACT & ANALYSIS The Examiner finds, inter alia, that Momchilovich discloses a pressure-sensitive adhesive comprising a tacky adhesive polymer and 0.1 to 15 parts by weight of a chlorinated polyolefin based on 100 parts by weight of the tacky adhesive polymer (Final Act. 2 (citing Momchilovich 2:15-28)). The Examiner further finds that Momchilovich' s chlorinated polyolefin is not described as having the requisite heat of fusion (Final Act. 2). The Examiner, however, finds that Masumoto teaches "that the heat of fusion of []chlorinated polyolefins in adhesives ... should be between 0-2 Jig for good solvent resistance, cold-temperature fluidity, adhesive properties, and prevention of gelling" (id. (citing Masumoto ,-J,-J 6, 7, 8, and 12)). The Examiner concludes that it would have been obvious to one of ordinary skill in the art to include Matsumoto's chlorinated polyolefin with a heat of fusion in the range of from 0-2 JI g in Momchilovich' s pressure- sensitive adhesive and to optimize the heat of fusion thereof for the desired solvent resistance, cold-temperature fluidity, adhesive properties, and prevention of gelling (Final Act. 3). Appellant argues that Momchilovich recommends using chlorinated polyolefin CP 343-1, which possesses a heat of fusion of 16.9 Jig (Appeal Br. 5 (citing Momchilovich 4:25-30, 10:64-67; Spec. 6, Table 1). Appellant directs our attention to the Specification's Examples, which compares the performance of pressure-sensitive adhesives comprising CP 343-1 against pressure-sensitive adhesives comprising a different chlorinated polyolefin. 3 Appeal 2018-008960 Application 15/120,132 According to Appellant, Comparative Example 5 includes Momchilovich' s CP 343-1, whereas Working Example 7 includes Superchlon 9305, which possesses a heat of fusion ofO Jig (Appeal Br. 5 (citing Spec. Tables 1, 3, 5) ). Appellant appears to argue that the provided data sufficiently rebuts any prima facie case established by the Examiner because the "improvements in strength that App[ ell]ants achieved with the use of a O Jig heat of fusion chlorinated polyolefin were dramatic" (Appeal Br. 5; see also Reply Br. 4). We, however, agree with the Examiner that these results are not adequate evidence of unexpected results for the claims on appeal (Ans. 3). In particular, the claims are not commensurate in scope with the provided data because claim 1 recites the broad limitation "a tacky adhesive polymer." However, the Examples only tested 10 different compounds in two different mixtures, which were added in a particular method, and the composition was fabricated into a film utilizing a particular method (id.). We, therefore, agree with the Examiner that the claims are far broader than any unexpected results shown in the data will support (id.). Therefore, Appellant's results do not rebut any established prima facie case of obviousness. Appellant argues that the Examiner has not established a prima facie case of obviousness because there is no motivation to combine the teachings of Momchilovich and Masumoto (Appeal Br. 2-8; Reply Br. 2-4). In particular, Appellant argues that Matsumoto teaches a resin solution, which is 60-90% solvent (Appeal Br. 7 ( citing Matsumoto Abstract, claim 1, ,-J 7). According to Appellant, Matsumoto's choice of chlorinated polyolefin having a heat of fusion in the range of from 0-2 Jig is 4 Appeal 2018-008960 Application 15/120,132 directed to improving the characteristics of a solution in a solvent (Appeal Br. 7). Appellant contrasts Matsumoto with Momchilovich, which refers to a "solvent" as a conventional organic solvent used in the industry, such as toluene, heptane, ethyl acetate, methyl ethyl ketone, acetone, xylene, tetrahydrofuran, trichloroethylene, and mixtures thereof (Reply Br. 2 ( citing Momchilovich 3:2-6)). Appellant argues that Momchilovich is substantially solvent-free and dissolves chlorinated polyolefin in acrylate monomers or an acrylic syrup without the use of solvent (Reply Br. 3). Appellant thus concludes that there would have been no motivation to combine these references because: (i) Matsumoto requires conventional solvents and teaches a choice of chlorinated polyolefin intended to improve solution characteristics in conventional solvents, (ii) whereas Momchilovich teaches a composition free of conventional solvents (see generally Reply Br. 2-4; Appeal Br. 6-8). Appellant's arguments are not persuasive. We agree with the Examiner that one of ordinary skill in the art would have recognized that Matsumoto's beneficial properties, which are provided by a chlorinated polyolefin having a heat of fusion between 0-2 Jig, are conferrable to solutions made in constructing Momchilovich' s composition (Ans. 4). We note that Momchilovich explicitly discloses that, "[i]n a preferred embodiment, the chlorinated polyolefins can be dissolved in ... acrylate monomers or syrups to form a substantially clear to hazy solution which will not separate into layers or form a precipitate when left unagitated for a minimum of a week at room temperature" (Momchilovich 3:66-4:4) ( emphasis added). 5 Appeal 2018-008960 Application 15/120,132 Furthermore, as the Examiner found, Matsumoto[] teach[ es] that by having a heat of fusion between 0-2 Jig[,] the crystallinity of the chlorinated polyolefin is low and gelling will not occur during cold storage .... Matsumoto[] teach[es] that by holding down the heat of fusion it will improve the mobility of the resin in low temperature, and will provide a better coating and good adhesion . . . . At a higher heat of fusion[,] the solution flowability is poor even at room temperature, and fluidity at low temperature becomes worse, such as thickening or gelation during storage . . . . As a result, the workability in winter is largely restricted .... Matsumoto[] teach[ es] that the low heat of fusion prevents the polymers from attracting each other due to their cohesive force to increase the entanglement at the molecular level. The crystalline product becomes a nucleus, and gradually influences the surrounding melted resin as a whole. Therefore, by lowering the crystallinity by using a low heat of fusion prevents the formation of the nucleus of crystalline matter, and good flowability at a room temperature, and even low temperature, is obtained . . . . Matsumoto[] teach[ es] that their binder resin is used in adhesives. (Ans. 4 (citing Matsumoto ,-J,-J 12, 15-17)). On these facts, we find one of ordinary skill in the art would have gleaned from Matsumoto that the benefits conferred by dissolving chlorinated polyolefins having a heat of fusion between 0-2 Jig in acrylate syrups is not limited only to this syrup solution. Rather, the Examiner's finding is reasonable that Matsumoto teaches or suggests a choice of chlorinated polyolefin intended to improve characteristics in solutions that are generally used to dissolve chlorinated polyolefin. See In re Fritch, 972 F.2d 1260, 1264 (Fed. Cir. 1992) (explaining that "[i]t is well settled that a prior art reference is relevant for all that it teaches to those of ordinary skill in the art")). Therefore, a preponderance of evidence in the record supports 6 Appeal 2018-008960 Application 15/120,132 that the Examiner has established a prima facie case of obviousness based on the combination of Momchilovich and Masumoto. Accordingly, we affirm the Examiner's Â§ 103 rejections of claims 1- 15. DECISION 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. Â§ l .136(a)(l )(iv). AFFIRMED 7