Henkel AG & Co. KGaA et al.

Patent Trials and Appeals Board

Mar 11, 2022

2021001351 (P.T.A.B. Mar. 11, 2022)

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. 14/550,380 11/21/2014 Ciaran McArdle PT031499/US 9194 31217 7590 03/11/2022 Henkel Corporation One Henkel Way Rocky Hill, CT 06067 EXAMINER BRADFORD, ELIZABETH ART UNIT PAPER NUMBER 1746 NOTIFICATION DATE DELIVERY MODE 03/11/2022 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): rhpatentmail@henkel.com trish.russo@henkel.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CIARAN MCARDLE, EDWARD SHUDE XIAO, KERSTIN VAN WIJK, LIGANG ZHAO, ANJA SCHNEIDER, REINHOLD DOMANSKI, PATRICIA PETRICK, and HANSJOERG ANDER Appeal 2021-001351 Application 14/550,380 Technology Center 1700 Before JEFFREY T. SMITH, BEVERLY A. FRANKLIN, and JEFFREY R. SNAY, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 3, 5-21 and 27. Claims 22-25 are withdrawn from consideration. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as HENKEL AG & Co. KGaA. (Appeal Br. 2.) Appeal 2021-001351 Application 14/550,380 2 CLAIMED SUBJECT MATTER The claims are directed to a curable composition, comprising one or more solid monofunctional cyanoacrylate monomers and one or more (co)polymers. (Spec. ¶1.). Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A curable composition, comprising: (a) (2-phenylethyl) 2-cyanoacrylate; and (b) at least one (co)polymer present in an amount from about 20 wt.% to about 85 wt.%, based on the total weight of the composition. Claims Appendix to Appeal Br. The following rejections are presented for our review: I. Claims 1, 3, 5-9, and 13-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 5-9, 11, 15, 16, and 23 of copending Application No. 14/403,229. II. Claims 1, 3, 5-10, 12-21, and 27 are rejected under pre- AIA 35 U.S.C. § 103(a) as obvious over O’Connor (US 4,440,910) in view of Sato (JP 06-192202 A), Coover (US 3,728,375) and optionally McArdle (US PG Pub 2011/0151243 A1). III. Claim 11 is rejected under pre- AIA 35 U.S.C. § 103(a) as obvious over O’Connor, Sato, Coover, and optionally McArdle and in further view of Fukuzawa (US 4,749,778). Appeal 2021-001351 Application 14/550,380 3 OPINION Obviousness-type double patenting We summarily sustain the Examiner’s provisional rejection of claims 1, 3, 5-9, and 13-20 on the grounds of non-statutory obviousness-type double patenting as unpatentable over claims 1, 3, 5-9, 11, 15, 16, and 23 of US Patent application No. 14/403,229 without further comment, because Appellant does not contest this rejection (Appeal Br. 19). 37 C.F.R. § 41.37(c)(1)(iv); see also Manual of Patent Examining Procedure (MPEP) § 1205.02 (9th ed. Jan. 2018) (“If a ground of rejection stated by the examiner is not addressed in the appellant’s brief, appellant has waived any challenge to that ground of rejection and the Board may summarily sustain it, unless the examiner subsequently withdrew the rejection in the examiner’s answer.”). Obviousness Rejections2 After consideration of Appellant’s arguments and evidence and the Examiner’s position in the Final Office Action and Answer, we AFFIRM the obviousness determinations for the reasons provided by the Examiner. We add the following. 2 Appellant’s arguments are principally directed to independent claim 1. (Appeal Br. 5-17). Appellant does not present separate arguments addressing the dependent claims. (App. Br. 5-17). Appellant does not present separate arguments for separately rejected claim 11 and relies on the same arguments presented for independent claim 1. (Appeal Br. 18). We select independent claim 1 as representative of the rejected claims and limit our discussion to independent claim 1. Appeal 2021-001351 Application 14/550,380 4 The complete statement of the Examiner’s rejection appears in the final Action. (Final Act. 4-8.) The Examiner finds O’Connor teaches a curable adhesive composition comprising at least one 2-cyanoacrylate monomer and at least one copolymer comprising EVA or poly(meth)acrylate (co)polymers. (Final Act. 5-6; O’Connor col. 2, l. 30, col. 4, ll. 12-32.) The Examiner finds O’Connor teaches a formula representative of suitable monomeric cyanoacrylate esters wherein suitable substituents for the formula include with a phenyl group any suitable linkages. (Final Act. 6. O’Connor specifically states: The benefits of this invention are achievable with essentially all adhesive compositions based upon cyanoacrylate esters. Most commonly, the esters have the [sic, formula]: wherein R represents a C1-16 alkyl, cycloalkyl, alkenyl, cycloalkenyl, phenyl or heterocyclic (such as furfuryl) radical. Naturally, the above R group can contain any linkages or substituents which do not adversely affect the monomer in the performance of its intended function in the cyanoacrylate adhesive compositions, such as strongly basic substituents which may adversely affect the stability of the adhesive compositions. For purposes of this invention, the preferred monomers are those wherein R is a cyclohexyl or a C1 to C6 alkyl or alkenyl radical. Most preferred are methyl and ethyl cyanoacrylates. The esters may be used singly or in admixture. (O’Connor col. 2 ll. 26-47.) The Examiner finds O’Connor teaches the weight ratio of the total amount of cyanoacrylate monomers to the total amount of (co)polymers in the curable composition is about 20 wt% of the composition (O’Connor col. 5, ll. 28-31.) The Examiner finds 2-phenylethyl 2-cyanoacrylate was known as a suitable material for adhesives. (Final Act. 6; Sato, Abstract and Constitution; Coover, col. 4, ll. 4-5.) The Examiner concludes it would have Appeal 2021-001351 Application 14/550,380 5 been obvious to use 2-phenylethyl 2-cyanoacrylate as the cyanoacrylate in adhesive composition such as described by O’Connor. (Final Act. 5.) The Examiner further finds 2-cyanoacrylate adhesives compositions were known to exhibit excellent adhesive and whitening preventive properties. (Final Act. 5-6; McArdle ¶¶ 18, 23, and 28.) Appellant argues the combination of O’Connor with Sato would not have led a person skilled in the art to the selections necessary to arrive at the claimed curable composition. Appellant’s arguments focus on the cyanoacrylate formula provided by O’Connor and the selections necessary to arrive at the 2-cyanoacrylate monomer required by the claimed invention (App. Br. 8-15.) Appellant’s arguments lacks persuasive merit. A person of ordinary skill in the art would have reasonably expected that all of the cyanoacrylate monomers that fall within O’Connor’s designated formula would have been suitable for curable adhesive composition. Appellant has failed to argue that 2-phenylethyl 2-cyanoacrylate does not fall within the scope of O’Connor’s disclosed formula. The cited prior art establishes 2-phenylethyl 2- cyanoacrylate was specifically known as a suitable material for adhesives. (Sato) While O’Connor describes other suitable cyanoacrylate monomers, this disclosure does not detract from the fact that 2-phenylethyl 2- cyanoacrylate falls within the scope of the formula and is also is known for use in adhesive compositions. A reference is available for all that it teaches to a person of ordinary skill in the art. See In re Inland Steel Co., 265 F.3d 1354 (CA FC 2001); Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989). Consequently, the evidence of record establishes that a person of ordinary skill in the art would have reasonably expected the suitability of utilizing 2-phenylethyl 2-cyanoacrylate in adhesive Appeal 2021-001351 Application 14/550,380 6 compositions comprising the combination of at least one 2-cyanoacrylate monomer and at least one copolymer monomer such as described by O’Connor. Secondary Considerations When evidence of secondary considerations is submitted, we begin anew and evaluate the rebuttal evidence along with the evidence upon which the conclusion of prima facie obviousness was based. In re Rinehart, 531 F.2d 1048, 1052 (CCPA 1976). Appellant argues they have presented evidence of unexpected results which demonstrates the differences in results obtained when the adhesive composition comprises the combination of 2-phenylethyl 2-cyanoacrylate with a copolymer that show comparable improvement over the comparative cyanoacrylate monomer in combination with that same film forming (co)polymer. (App. Br. 16-17). Appellant argues the amendment to claim 1 specifying 2-phenylethyl 2-cyanoacrylate establishes the evidence of unexpected results is commensurate in scope with the claimed invention. (App. Br. 15-16.) Appellant argues the Examiner has failed to properly consider the evidence of non-obviousness. (Appeal Br. 15-18.) Appellant has not demonstrated the data presented in the Specification exhibits unexpected results. According to Appellant the comparative examples differ from the inventive examples by utilizing the same copolymer and only changing the cyanoacrylate component. (Appeal Br. 16.) Appellant further states: Here, Appellants demonstrated that the closest art of record was unsuitable for a variety of structural bonding applications at least because lap shear strength only increased at most about 5 times after cure (see Specification at Example 3, [0083], Table 4), whereas the composition formed from 2-phenylethyl 2-cyanoacrylate Appeal 2021-001351 Application 14/550,380 7 (Composition 1) increased in lap shear strength more than 125 times after cure (see id. at Example 1, [0080], Table 1). (Appeal Br. 16-17.) The Examiner contends the relied upon evidentiary showing is not commensurate in scope relative to the copolymer utilized with the 2- cyanoacrylate monomer. (Ans. 11.) Appellant responds in the responsive Brief as follows: To the extent the Examiner alleged the unexpected results showing is not commensurate with the claims due to the “broad copolymer claimed” (Answer at 11), the Examiner failed to even acknowledge, let alone rebut, Appellants’ position that there is no reason to believe that one of ordinary skill in the art could not extrapolate the demonstrated results for certain (co)polymers to other (co)polymers. (Reply Br. 5.) Appellant has failed to demonstrate that the data from the discussed comparative examples establish that the inventive examples exhibit unexpected results. The burden of demonstrating unexpected results rests on the party asserting them, and “it is not enough to show that results are obtained which differ from those obtained in the prior art: that difference must be shown to be an unexpected difference.” In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). “Mere improvement in properties does not always suffice to show unexpected results.” In re Soni, 54 F.3d 746, 751 (Fed. Cir. 1995). “[W]hen unexpected results are used as evidence of nonobviousness, the results must be shown to be unexpected compared with the closest prior art.” In re Baxter-Travenol Labs., 952 F.2d 388,392 (Fed. Cir. 1991). The Specification contains a single comparative example that has the combination of a cyanoacrylate and a copolymer (Comparative Composition 1), Appellant has failed to explain why the single comparative showing is Appeal 2021-001351 Application 14/550,380 8 representative of the closest prior art.3 Appellant has failed to explain why the 2 inventive examples are commensurate in scope with the varying percentages of the components encompassed by the claimed invention and the wide variety of copolymers encompassed by the claimed invention. Appellant has also failed to provide sufficient analysis of the properties presented in the tables of the Specification which have been relied upon to establish unexpected results. Appellant has failed to explain why the data presented in the tables are representative of unexpected results and would have been expected to have been achieved by the entire scope of the claimed invention. This analysis is especially critical here where the results obtained by the 2 representative compositions have significant differences in the reported Lap Shear strength. There is also insufficient discussion of the Shear resistance properties of both compositions. Appellant’s representative in the briefs asserts the claimed invention yields unexpectedly improved properties. However, Appellant’s representative has failed to identify where the evidence presented in the Specification was described to have been unexpected. See In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997) (argument by counsel cannot take the place of evidence). We sustain the Examiner’s rejections under 35 U.S.C. § 103(a) for the reasons the Examiner presents and the reasons presented above. 3 Comparative Composition 2 fails to comprise the combination of a cyano acrylate and a copolymer. Appeal 2021-001351 Application 14/550,380 9 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3, 5-9, 13-20 Nonstatutory double patenting 1, 3, 5-9, 13-20 1, 3, 5-10, 12-21, 27 103(a) O’Connor Sato, Coover, McArdle 1, 3, 5-10, 12-21, 27 11 103(a) O’Connor Sato, Coover, McArdle, Fukuzawa 11 Overall Outcome 1, 3, 5-21, 27 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED