Henkel IP & Holding GmbH

Patent Trials and Appeals BoardNov 16, 2021

2021000062 (P.T.A.B. Nov. 16, 2021)

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. 15/582,803 05/01/2017 Marisa Phelan ICC-430/US/DIV 2996 31217 7590 11/16/2021 Henkel Corporation One Henkel Way Rocky Hill, CT 06067 EXAMINER CAI, WENWEN ART UNIT PAPER NUMBER 1763 NOTIFICATION DATE DELIVERY MODE 11/16/2021 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 MARISA PHELAN, CORMAC DUFFY, JOHN KILLORAN, BARRY N. BURNS, JOHN GUTHRIE, BERNARD RYAN, and CIARA GOFF Appeal 2021-000062 Application 15/582,803 Technology Center 1700 Before CATHERINE Q. TIMM, JEFFREY R. SNAY, and DEBRA L. DENNETT, Administrative Patent Judges. DENNETT, Administrative Patent Judge. DECISION ON APPEAL1 1 In our Decision, we refer to the Specification (“Spec.”) of Application 15/582,803 filed May 1, 2017 (“the ’803 App.”); the Non-Final Office Action dated Jan. 30, 2020 (“Non-Final Act.”); the Appeal Brief filed June 30, 2020 (“Appeal Br.”); the Examiner’s Answer dated Sept. 1, 2020 (“Ans.”); and the Reply Brief filed Oct. 1, 2020 (“Reply Br.”). Appeal 2021-000062 Application 15/582,803 2 STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1, 6–14, and 16–18. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER According to the Specification, the subject matter of the invention remedies the shortcomings on thermal performance of cyanoacrylate compositions by providing a cyanoacrylate composition that when cured provides improved heat resistance by the combination of a mono-functional cyanoacrylate component and a multi-functional cyanoacrylate component. Spec. ¶ 16. Claim 1, reproduced below, illustrates the claimed subject matter: 1. A cyanoacrylate adhesive composition having improved resistance to thermal degradation at elevated temperature conditions of 120°C after 5 days, comprising: (a) allyl-2-cyanoacrylate, (b) a bis-functional cyanoacrylate in an amount of about 10 to about 20 weight percent based on the cyanoacrylate adhesive composition, and (c) a cyanoacrylate selected from the group consisting of methyl cyanoacrylate, ethyl-2-cyanoacrylate, propyl cyanoacrylates, butyl cyanoacrylates, octyl cyanoacrylates, and B-methoxyethyl cyanoacrylate, said cyanoacrylate adhesive composition when cured having improved resistance to thermal degradation at an elevated 2 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Henkel IP & Holding GmbH as the real party in interest. Appeal Br. 2. Appeal 2021-000062 Application 15/582,803 3 temperature of 120°C after 5 days over an allyl-2- cyanoacrylate-containing cyanoacrylate adhesive composition without added bis-cyanoacrylate, when cured. Appeal Br. 20 (Claims App.) (some paragraphing added). REFERENCES The Examiner relies on the following prior art in rejecting the claims on appeal: Name Reference Date Gololobov et al. (“Gololobov”) US 6,096,848 Aug. 1, 2000 Misiak US 2004/0131827 A1 July 8, 2004 REJECTIONS3 The Examiner maintains the following rejections: 1. Claims 16 and 18 under 35 U.S.C. § 112, first paragraph as failing to comply with the written description requirement. Final Act. 2. 2. Claims 1, 6, 11–14, 16, and 17 under 35 U.S.C. § 103(a) as obvious over Gololobov. Final Act. 3. 3. Claims 7–10 under 35 U.S.C. § 103(a) as obvious over Gololobov in view of Misiak. Final Act. 4. 3 We note that Appellant properly appeals from the Examiner’s non-final rejection of Jan. 30, 2020 because the claims on appeal have been twice rejected. See 35 U.S.C. § 134(a) (“An applicant for a patent, any of whose claims has been twice rejected, may appeal from the decision of the primary examiner to the Patent Trial and Appeal Board.”). Appeal 2021-000062 Application 15/582,803 4 OPINION We review the appealed rejections for error based upon the issues identified by Appellant and in light of the arguments and evidence produced thereon. 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)) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the [E]xaminer’s rejections.”). After considering the evidence presented in this Appeal and each of Appellant’s arguments, we are persuaded that Appellant identifies reversible error in the written description rejection, but not in the obviousness rejections. Thus, we reverse the written description rejection and affirm the obviousness rejections for the reasons below. Written Description Rejection Claim 16 depends from claim 1 and further recites, “wherein the allyl- 2-cyanoacrylate of (a) and the cyanoacrylate of (c) are present in a by weight ratio of about 1:1.” Appeal Br. 23 (Claims App.). Claim 18 is independent and contains the same language as claim 16, but also recites that (c) is ethyl- 2-cyanoacrylate. Id. The Examiner rejects the claims as failing to comply with the written description requirement because the claims recite “by weight ratio of about 1:1,” but the Specification only supports “1:1,” not “about 1:1.” Non-Final Act. 2. The Examiner finds that the Specification uses “about” only in describing the total amounts of mono-functional cyanoacrylate and bis- functional cyanoacrylate. Ans. 3. “About” is not used to describe a ratio of elements as claimed. Id. Appeal 2021-000062 Application 15/582,803 5 Appellant argues that throughout the Specification, each use of an amount of any of the components is qualified by the term “about.” Appeal Br. 7. Appellant points out that the Examples employ different amounts of allyl cyanoacrylate and ethyl-2-cyanoacrylate, the two components linked by the “by weight ratio” claim language. Id. Appellant contends that one of ordinary skill in the art reviewing the entire application would recognize that some small flexibility in determining the value is described in the disclosure as a whole, thus the stated weights “are necessarily qualified by the word ‘about’.” Id. at 8. Appellant argues use of an amount of any of the components used in the inventive compositions is qualified by the term “about” supports an interpretation of “about” that is sufficiently broad to embrace the ranges and ratios of the various constituents used in the exemplary compositions. Reply Br. 4. Appellant contends that the term “about” is used in connection with the by weight ratio to indicate that the given values are not exact values, but permit small deviations from the values. Id. Upon our review of the disclosures in the Specification, we find Appellant’s arguments to be persuasive. The Specification states that the cyanoacrylate component of the invention is selected from desirably at least two of specified monomers, and “[a] particularly desirable combination of mono-functional cyanoacrylate monomers includes allyl-2-cyanoacrylate together with an alkyl cyanoacrylate, such as ethyl-2-cyanoacrylate.” Spec. ¶ 29. In addition, the mono-functional cyanoacrylate component should be included in an amount “from about 50% to about 99.98% by weight” of the total composition. Id. ¶ 30 (emphasis added). Thus, a combination of two more mono-functional cyanoacrylate monomers as disclosed in the Appeal 2021-000062 Application 15/582,803 6 Specification would be “about” 50% to 99.98% by weight. Thus, the written description reasonably conveys that Appellant had possession of combinations in ratios in a weight ratio of “about 1:1.” We do not sustain the rejection of claims 16 and 18 as lacking written description. Obviousness Rejections Appellant does not make nonobviousness arguments for any claim separately from the other claims. See Appeal Br. 9–16. We select independent claim 1 as representative of the claims subject to rejection as obvious over Gololobov. 37 C.F.R. § 41.37(c)(1)(iv). We also consider these arguments to the extent applicable to the claims subject to rejection as obvious over Gololobov in view of Misiak. The Examiner finds that Gololobov discloses a cyanoacrylate adhesive comprising the claimed weight percent of bis-cyanoacrylates in claim 1. Non-Final Act. 3; see also Ans. 3. The Examiner acknowledges that Gololobov does not teach a mixture containing allyl and alkyl 2- cyanoacrylate. Non-Final Act. 3. However, the Examiner finds that Gololobov discloses the preferred 2-cyanoacrylate includes allyl, methyl, ethyl, etc. monomers of 2-cyanoacrylate. Id. The Examiner finds that Gololobov discloses that bis-cyanoacrylate can be combined with one or more 2-cyanoacrylates. Ans. 3. Combinations of allyl monomers with methyl, ethyl, propyl, butyl, or methoxyethyl monomers read on claim 1. Id. at 4. The Examiner states that it is prima facie obvious to combine two ingredients, each of which is targeted by the prior art to be useful for the same purpose. Final Act. 3; Ans. 4 (both citing In re Lindner, 457 F.2d 506, Appeal 2021-000062 Application 15/582,803 7 509 (CCPA 1972)). Because Gololobov renders the claimed ingredients and amounts obvious, the Examiner finds that “it is reasonable that one of ordinary skill in the art would expect the claimed physical properties to naturally arise.” Final Act. 4. Appellant argues that the Examiner’s admission that “Gololobov does not teach a mixture containing allyl and alkyl 2-cyanoacrylate” (Non- Final Office Action 3) is significant because allyl and alkyl 2-cyanoacrylate represent two of the three chemical components required by claim 1. Appeal Br. 13. According to Appellant, therefore 67% of the required chemical components of claim 1 are missing from Gololobov. Id. Appellant argues that the Examiner misinterprets the list of cyanoacrylates taught in Gololobov, which are disclosed as useful in the alternative, not in combination. Id. at 14. Appellant argues that “only impermissible hindsight could lead to the fortuitous picking choosing from among the 7 list cyanoacrylates, and the vast number of possible combinations . . . while ignoring or disregarding the remainder of [Gololobov’s] disclosure, to arrive at the specific allyl cyanoacrylate/ethyl- 2-cyanoacrylate combination.” Id. Appellant’s arguments are not persuasive of reversible error by the Examiner. Gololobov does not specifically teach a mixture of allyl-2- cyanoacrylate and alkyl-2-cyanoacrylate in combination with a bis- functional cyanoacrylate. If it did, the rejection would be for anticipation, not for obviousness. However, Gololobov teaches combining one or more biscyanoacrylates with one or more 2-cyanoacrylates, and that preferred monomers are the allyl, methoxyethyl, ethoxyethyl, methyl, ethyl, propyl or Appeal 2021-000062 Application 15/582,803 8 butyl esters of 2-cyanoacrylic acid. Gololobov, col. 3, ll. 4–6, col. 6, ll. 5–9. One of ordinary skill in the art combining “one or more 2-cyanoacrylates” with a biscyanoacrylate would reasonably start by using two of the listed seven 2-cyanoacrylates, and not all seven at the same time. There are twenty-one possible combinations of two of the preferred 2- acrylates, and claim 1 reads on five of them. Appellant’s reliance on In re Baird, which concerned a genus encompassing “more than 100 million different diphenols,” only one of which was claimed (In re Baird, 16 F.3d 380, 382 (Fed. Cir. 1994)), and In re Jones, which concerned a “potentially infinite genus” (In re Jones, 958 F.2d 347, 350 (Fed. Cir. 1992)), is thus misplaced. See Appeal Br. 15. The fact that a reference “discloses a multitude of effective combinations does not render any particular formulation less obvious. This is especially true because the claimed composition is used for the identical purpose taught by the prior art.” Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989). Gololobov discloses that its compositions are useful as storage stable cyanoacrylate adhesives. Golobov, Abstract. “[P]atentability is determined on the totality of the record, by a preponderance of evidence with due consideration to persuasiveness of argument.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Here, the preponderance of the evidence supports the Examiner’s position. For the above reasons, we sustain the rejection of claim 1 as obvious over Gololobov. For the same reasons, we sustain the rejection of claims 6, 11–14, 16, and 17 as obvious over this reference. In relation to the obviousness rejection of claims 7–10 over Gololobov in view of Misiak, Appellant merely states that Misiak does not rectify the Appeal 2021-000062 Application 15/582,803 9 deficiencies of Gololobov. Appeal Br. 16. Because Gololobov is not deficient, we sustain the rejection of claims 7–10. CONCLUSION The Examiner’s rejections are affirmed. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 16, 18 112, first paragraph Written Description 16, 18 1, 6, 11– 14, 16, 17 103(a) Gololobov 1, 6, 11– 14, 16, 17 7–10 103(a) Gololobov, Misiak 7–10 Overall Outcome 1, 6–14, 16, 17 18 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). AFFIRMED