Ex Parte Zhang et al

Patent Trial and Appeal BoardJul 10, 2014

11514499 (P.T.A.B. Jul. 10, 2014)

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. 11/514,499 09/01/2006 Yue S. Zhang 2056A.BDG 5531 79525 7590 07/11/2014 Henkel Corporation Patent Department One Henkel Way Rocky Hill, CT 06067 EXAMINER FIGUEROA, JOHN J ART UNIT PAPER NUMBER 1768 MAIL DATE DELIVERY MODE 07/11/2014 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 YUE S. ZHANG, JU-MING HUNG, and WAYNE K. CHU ____________ Appeal 2012-010610 Application 11/514,499 Technology Center 1700 ____________ Before BRADLEY R. GARRIS, TERRY J. OWENS, and KAREN M. HASTINGS, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 1-13 and 15-211 under 35 U.S.C. § 102(b) as being anticipated by Faust (U.S. 6,924,336 B2) (Ans. 7); as well as rejecting claims 1-13 and 15-17 on the ground of nonstatutory double patenting over claims 1- 15 of U. S. Patent No. 7,112,631 B2 (Ans. 6). We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. 1 While Appellants inadvertently did not list claims 18-21 in the grounds of rejection to be reviewed on appeal (App. Br. 7), they did include arguments with respect to claim 18 (App. Br. 15). Claims 19-20 depend from claim 18, and claim 21 depends from claim 1. Appeal 2012-010610 Application 11/514,499 2 Claim 1 is illustrative of the claimed subject matter: 1. A polyurethane hot melt adhesive composition comprising a urethane prepolymer consisting essentially of polyisocyanate, a polyol that is not a polyester polyol, a crystalline monofunctional reactant, and a functional thermoplastic polymer, wherein the adhesive comprises from about 0.1 wt % to about 20 wt % of the reactant and wherein the thermoplastic polymer is selected from acrylic polymers, functional acrylic polymers, hydroxy functional acrylic polymers, polyvinyl acetate, polyvinyl chloride, methylene polyvinyl ether, cellulose acetate, styrene acrylonitrile, amorphous polyolefin, thermoplastic urethane, polyacrylonitrile, polybutadiene, isobutylene diol and mixtures thereof; wherein the adhesive composition does not include polyester polyols. Each of claims 1-7, 9, 13, and 15-21 include a limitation to a “hot melt adhesive” (Claims App’x)2. Appellants present no arguments with respect to independent claim 8 and its dependent claims 10-12 (see, e.g., App. Br. 6). Accordingly, we summarily affirm the Examiner’s rejection of these claims. Appellants also present no arguments with respect to the Examiner’s obviousness-type double patenting rejection. Accordingly, we summarily affirm the Examiner’s double patenting rejection. PRINCIPLES OF LAW [U]nless a reference discloses within the four corners of the 2 Method claims 15 and 16 depend from claim 14, which has been cancelled. Appropriate correction should be provided in any subsequent prosecution. For purposes of addressing the § 102 rejection of these claims, we treat them as though they depend from method claim 13, Appeal 2012-010610 Application 11/514,499 3 document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C. § 102. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). “[D]uring examination proceedings, claims are given their broadest reasonable interpretation consistent with the specification.” In re Translogic Tech., Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007), quoting In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000). See also, In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (The scope of the claims in patent applications is not determined solely on the basis of the claim language, but upon giving claims their broadest reasonable construction in light of the specification as it would be interpreted by one of ordinary skill in the art.); Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (“[T]he specification ‘is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.’” (internal citation omitted)). ANALYSIS Appellants argue that the Examiner has not shown how Faust identically discloses a “hot melt adhesive” as required by the disputed claims. A preponderance of the evidence supports Appellants’ position. Appellants argue that, as discussed in the Specification, it is well understood in the art that a hot melt adhesive is an adhesive that is a solid at room temperature which upon heating melts to a liquid or fluid state (e.g., App. Br. 10), and is not an aqueous polymer dispersion adhesive as disclosed in Faust (e.g., App. Br. 12, 18; Reply Br. 9, 10). Appellants Appeal 2012-010610 Application 11/514,499 4 provide detailed arguments and evidence that one of ordinary skill in the art would not consider the aqueous dispersion of Faust to be a hot melt adhesive as claimed, because a hot melt adhesive is solvent-free and does not include an aqueous composition (App. Br. 8-19; Reply Br. 2-10). A preponderance of the evidence supports Appellants’ position for the reasons discussed in the Briefs. Thus, we conclude that the ordinary and customary meaning of a "hot melt adhesive" is a solvent-free adhesive that is capable of being melted to a molten form and applied to a substrate. Therefore, we agree with Appellants that the Examiner has taken an unreasonably broad interpretation of the aforementioned claim limitation when considered in light of the Specification for the reasons explained in the Briefs. As such, we cannot sustain the anticipation rejection based on Faust as applied to claims 1-7, 9, 13, and 15-21. Accordingly, the Examiner’s §102 rejection of claims 1-7, 9, 13, and 15-21 is reversed. DECISION We affirm the Examiner’s obviousness-type double patenting rejection of claims 1-13 and 15-17. We affirm the Examiner’s § 102 rejection with respect to claims 8, and 10-12. We reverse the Examiner’s § 102 rejection with respect to claims 1-7, 9, 13, and 15-21. Appeal 2012-010610 Application 11/514,499 5 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). ORDER AFFIRMED-IN-PART cam