HENKEL IP & HOLDING GMBH

Patent Trials and Appeals Board

Mar 31, 2022

2022001925 (P.T.A.B. Mar. 31, 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. 16/031,504 07/10/2018 Nigel SWEENEY PT033919 3738 31217 7590 03/31/2022 Henkel Corporation One Henkel Way Rocky Hill, CT 06067 EXAMINER MILLER, DAVID L ART UNIT PAPER NUMBER 1763 NOTIFICATION DATE DELIVERY MODE 03/31/2022 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 NIGEL SWEENEY, BRIAN DEEGAN, LYNNETTE HURLBURT, ANDREW D. MESSANA, and MARC GALLIGAN __________ Appeal 2022-001925 Application 16/031,504 Technology Center 1700 ___________ Before ADRIENE LEPIANE HANLON, JAMES C. HOUSEL, and BRIAN D. RANGE, Administrative Patent Judges. HANLON, Administrative Patent Judge. DECISION ON APPEAL A. STATEMENT OF THE CASE The Appellant1 filed an appeal under 35 U.S.C. § 134(a) from an Examiner’s decision finally rejecting claims 1, 6, 7, 9-12, and 16. Claims 2-5 and 13-15 are also pending but have been withdrawn from consideration. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as HENKEL IP & HOLDING GMBH. Appeal Brief dated September 13, 2021 (“Appeal Br.”), at 3. Appeal 2022-001925 Application 16/031,504 2 Representative claim 1 is reproduced below, in relevant part,2 from the Claims Appendix to the Appeal Brief. The limitations at issue are italicized. 1. An adhesive composition in a two part configuration comprising, in amounts sufficient for the adhesive composition to cure within about 24 hours at 23°C after mixing: (a) Part (A) comprising a (meth)acrylate component, an organic peroxide and an acetal-containing free radically curable component; and (b) Part (B) comprising a (meth)acrylate component, and a benzoylthiourea compound or a benzoylthiourethane compound . . . wherein the acetal-containing free radically curable component is present in an amount sufficient to increase thermal activated debonding, at temperatures below 100 degrees C, of substrates adhesively bonded with the composition therebetween after part A and part B are mixed and the resulting composition is cured, when compared to the same adhesive composition cured under the same conditions, but without the acetal-containing free radically curable component. Appeal Br. 18-19. The Examiner maintains the following grounds of rejection on appeal: (1) claims 1, 6, 7, 9, 10, 12, and 16 under 35 U.S.C. § 103 as unpatentable over Jacobine3 in view of Woods;4 and (2) claim 11 under 35 U.S.C. § 103 as unpatentable over Jacobine in view of Woods, further in view of Righettini.5 2 The specific benzoylthiourea and benzoylthiourethane compounds recited in claim 1 are not at issue on appeal and thus have not been reproduced herein. A complete copy of claim 1 can be found in the Claims Appendix on pages 18-19 of the Appeal Brief. 3 US 2014/0004366 A1, published January 2, 2014. 4 US 2005/0101689 A1, published May 12, 2005. 5 US 2003/0216513 A1, published November 20, 2003. Appeal 2022-001925 Application 16/031,504 3 B. DISCUSSION There appears to be no dispute on appeal that Jacobine teaches a curable adhesive composition comprising the components recited in Parts (A) and (B) of claim 1, with the exception of the acetal-containing free radically curable component in Part (A). See Final Act. 4.6 Nonetheless, the Examiner finds that the curable adhesive composition disclosed in Woods includes a component corresponding to the acetal-containing free radially curable component recited in claim 1 (i.e., a component comprising a multifunctional alpha alkoxyalkyl group). Final Act. 5 (citing Woods ¶ 17). The Examiner finds that the multifunctional alpha alkoxyalkyl groups are “readily cleaved at elevated temperatures” and “when incorporated into a polymer network[,] function as a network breaking point when the polymer is heated above the degradation threshold temperature.” Final Act. 5 (citing Woods ¶ 17). The Examiner concludes that it would have been obvious to one of ordinary skill in the art to add the multifunctional alpha alkoxyalkyl groups of Woods to the (meth)acrylate component in Jacobine’s adhesive composition to impart heat degradation, and thus reworkability, to the adhesive composition. Final Act. 7; Woods ¶ 12 (describing that the disclosed adhesive compositions are reworkable). The following two limitations recited in claim 1 are at issue on appeal: (1) Parts (A) and (B) “in amounts sufficient for the adhesive composition to cure within about 24 hours at 23°C after mixing” and (2) “the acetal-containing free radically curable component is present in an amount sufficient to increase thermal activated debonding, at temperatures below 100 degrees C.”7 Appeal Br. 18-19. 6 Final Office Action dated April 12, 2021. 7 The Appellant does not present arguments in support of the separate patentability of any of claims 6, 7, 9-12, and 16. See Appeal Br. 12 (arguing that “Righettini Appeal 2022-001925 Application 16/031,504 4 As to the first limitation, the Appellant argues that paragraphs 44 and 45 of Jacobine, which are relied on by the Examiner in the obviousness rejection on appeal, “do not discuss modifications that effectuate cure at 23°C.” Appeal Br. 11. The Appellant argues that “the only mention of temperature in the cited disclosure pertains to components that are reactive at elevated temperature, not at 23°C (room temperature).” Appeal Br. 11 (citing Jacobine ¶ 45). The Appellant’s argument is not persuasive of reversible error. The Examiner finds Jacobine discloses that benzoylthiourea or benzoylthiourethane is used as an accelerator in the cured adhesive composition. Final Act. 7 (citing Jacobine ¶ 9); see also Ans. 168 (finding that Jacobine teaches the same benzoylthiourea cure accelerators as claimed by the Appellant). The Examiner finds that examples disclosed in Jacobine show that the reaction composition was mixed for about 5 seconds without heat and was “a solid after at most 15 minutes after mixing.” Ans. 16 (citing Jacobine ¶ 114); see also Final Act. 8. Therefore, the Examiner finds Jacobine teaches a cure time of significantly less than 24 hours at a room temperature of 23°C. Final Act. 8. The Appellant does not direct us to any error in the Examiner’s findings. As to the second limitation, the Appellant argues that Woods does not disclose an acetal-containing free radically curable component “in an amount ‘sufficient to increase thermal activated debonding, at temperatures below 100°C’” as recited in the claims on appeal.9 Appeal Br. 15 (emphasis added). does not remedy any of the deficiencies of Jacobine and Woods”). Therefore, for purposes of this appeal, we limit our focus to claim 1. 8 Examiner’s Answer dated December 17, 2021. 9 Claim 1 recites that the increase is compared to “the same adhesive composition cured under the same conditions, but without the acetal-containing free radically curable component.” Appeal Br. 19. Appeal 2022-001925 Application 16/031,504 5 The Examiner finds that the structure of Woods’ multifunctional alpha alkoxyalkyl component differs from the claimed component “only in the number of carbon atoms in the chain connecting the acetal methacrylate groups which would indicate that the claimed compounds . . . have the same degradable groups [and thus] would be expected to degrade at the same temperatures [as] the acetal compounds which are claimed.” Final Act. 6-7; see also Final Act. 9. In response, the Appellant argues that “the Examiner fails to acknowledge that the identity of the acetal-containing free radically curable component is not the sole pertinent feature [claimed].” Appeal Br. 13. The Appellant argues that “[t]he amount of the acetal-containing free radically curable component is also relevant.” Appeal Br. 13-14. The Appellant argues that “Woods simply does not teach or suggest the provision of any acetal-containing free radically curable component in an amount sufficient to increase thermal activated debonding as [claimed]” (i.e., “in an amount sufficient to increase thermal activated debonding, at temperatures below 100 degrees C”). Appeal Br. 14, 19. The Examiner finds Woods discloses that the multifunctional alpha alkoxyalkyl component is “capable of being degraded at a relatively low temperature heat.” Final Act. 7 (citing Woods ¶ 5). However, the Appellant argues that “Woods does not explicitly define ‘relatively low temperature heat’” and “its disclosure provides ample evidence that the recited ‘relatively low temperature’ is a temperature far greater than 100°C.” Appeal Br. 14. For support, the Appellant directs our attention to Woods Table 4 which, according to the Appellant, shows that the decomposition temperatures of five inventive compositions range from 190°C to 266°C. Appeal Br. 14-15. Despite the data reported in Woods Table 4, the Examiner finds Woods “teaches that the specific temperature of decomposition may be controlled by the Appeal 2022-001925 Application 16/031,504 6 amount of the alpha-alkoxyalkyl(meth)acrylate compound in the polymer which would allow for the claimed low temperature of increased thermal activated debonding.” Final Act. 16 (citing Woods ¶ 59); see also Ans. 22-23 (citing Woods ¶¶ 31, 59). In that regard, Woods discloses: The specific temperature of decomposition may be controlled by the relative amounts of mono to difunctional monomer that is present in the composition. As the concentration of mono-functional monomer in the uncured adhesive is increased, so the decomposition temperature of the cured adhesive is decreased, as seen when Composition 3 is compared with Compositions 4 and 5 and when Composition 3 is compared with Compositions 6 and 7 [in Table 4].” Woods ¶ 59 (emphasis added). Woods Tables 3 and 4 are reproduced below. Appeal 2022-001925 Application 16/031,504 7 Woods Tables 3 and 4 set out components of Compositions 3-7 and Composition 8 and provide the decomposition temperature for these compositions, respectively. Woods discloses that “Compound A is an example of a multi-functional alpha-alkoxyalkyl methacrylate ester useful in the present invention.” Woods ¶ 41. Compounds C and D, on the other hand, are said to be examples of a mono- functional alpha-alkoxyalkyl(meth)acrylate which may be included with the multi- functional alpha-alkoxyalkyl(meth)acrylate compounds in Woods’ inventive compositions. Woods ¶¶ 46, 48. Woods Table 4 (in combination with Woods Table 3) shows that as the amount of mono-functional alpha-alkoxyalkyl(meth)acrylate increases and the amount of multi- or difunctional alpha-alkoxyalkyl methacrylate ester decreases the decomposition temperature decreases. Thus, consistent with the Examiner’s findings, we find that the amount of multi-functional alpha- alkoxyalkyl(meth)acrylate is a result effective variable. See In re Boesch, 617 F.2d 272, 276 (CCPA 1980) (discovery of an optimum value of a result effective variable is ordinarily within the skill of the art); see also Woods ¶ 31 (disclosing that the inventive multi-functional alpha-alkoxyalkyl(meth)acrylate compounds are desirably present in amounts of about 5.0% to about 99% by weight of the total Appeal 2022-001925 Application 16/031,504 8 composition); Final Act. 16-17 (citing Woods ¶ 31); Ans. 22-23 (citing Woods ¶ 31). Moreover, claim 1 recites that the increased thermal activated debonding is “compared to the same adhesive composition cured under the same conditions, but without the acetal-containing free radically curable component.” Appeal Br. 19. The invention disclosed in Woods “is directed to (meth)acrylate compositions which include a multi-functional alpha-alkoxyalkyl(meth)acrylate compound and a free radical initiator.” Woods ¶ 11. Woods discloses that “when subjected to heat, [the compositions of the invention] are degraded more easily than polymers prepared from conventional acetal acrylates that do not contain alpha-alkoxyalkyl substituents on the acrylate group.” Woods ¶ 13; see also Final Act. 7 (citing Woods ¶ 13). Thus, on this record, a preponderance of the evidence of record supports a finding that Jacobine’s adhesive composition, as modified with the multi-functional alpha-alkoxyalkyl(meth)acrylate component disclosed in Woods, would have been expected to increase thermal activated debonding when compared to the same adhesive composition cured under the same conditions, but without Woods’ multi-functional alpha-alkoxyalkyl(meth)acrylate component. See Appeal Br. 19. The Appellant does not direct us to any evidence to the contrary. For the reasons discussed above, the obviousness rejections on appeal are sustained. C. CONCLUSION The Examiner’s decision is affirmed. Appeal 2022-001925 Application 16/031,504 9 In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 6, 7, 9, 10, 12, 16 103 Jacobine, Woods 1, 6, 7, 9, 10, 12, 16 11 103 Jacobine, Woods, Righettini 11 Overall Outcome 1, 6, 7, 9-12, 16 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED