Sohaib Elgimiabi et al.

Patent Trials and Appeals Board

Aug 28, 2019

15500703 - (D) (P.T.A.B. Aug. 28, 2019)

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.
15/500,703 01/31/2017 Sohaib ELGIMIABI 74496US010 3427
32692 7590 08/28/2019
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
DILLON, DANIEL P
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
08/28/2019 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 SOHAIB ELGIMIABI and PETER J. HARRISON
____________________

Appeal 2018-008482
Application 15/500,703
Technology Center 1700
____________________

Before KAREN M. HASTINGS, BRIAN D. RANGE, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

RANGE, Administrative Patent Judge.

DECISION ON APPEAL
SUMMARY
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–6 and 10–25. We have jurisdiction. 35 U.S.C.
§ 6(b).
We REVERSE.

1 Appellant is the Applicant, 3M Company, which, according to the Appeal
Brief, is also the real party in interest along with its affiliate, 3M Innovative
Properties Company. Appeal Br. 2.
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STATEMENT OF THE CASE2
Appellant describes the invention as relating to an adhesive
composition that may be heat curable and may be adhesive in the form of a
tape. Spec. 2:20–28. Claim 1, reproduced below with emphasis added to
certain key recitations, is the only independent claim on appeal and is
illustrative of the claimed subject matter:
1. A curable composition comprising:
a) 30-80 wt% of a room temperature liquid epoxy resin;
b) 0. 5-10 wt% of an epoxy curative;
c) 5-40 wt% of a thermoplastic resin; and
d) 0.5-10 wt% of a physical blowing agent
wherein the curable composition demonstrates expansion
upon cure of greater than 150%; and
wherein the thermoplastic resin is a polyethersulfone.
Appeal Br. 7 (Claims App.).
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Smith
Kamae et al.
(“Kamae”)
Bilcai et al.
(“Bilcai”)
Elgimiabi et al.
US 2008/0166484 A1
US 2011/0097568 A1

US 2012/0121878 A1

EP 2700683 A1
July 10, 2008
Apr. 28, 2011

May 17, 2012

Feb. 26, 2014

2 In this Decision, we refer to the Final Office Action dated February 1, 2018
(“Final Act.”), the Appeal Brief filed April, 9, 2018 (“Appeal Br.”), the
Examiner’s Answer dated July 27, 2018 (“Ans.”), and the Reply Brief filed
August 23, 2018 (“Reply Br.”).
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(“Elgimiabi”)
REJECTIONS
On appeal, the Examiner maintains rejections that were modified by
the March 30, 2018 Advisory Action and which are stated in the Answer3:
Rejection 1. Claims 1–6, 10, 13, and 15–18 under 35 U.S.C. § 103 as
unpatentable over Elgimiabi in view of Bilcai and Kamae. Ans. 3.
Rejection 2. Claims 11, 12, 14, and 19–25 under 35 U.S.C. § 103 as
unpatentable over Elgimiabi in view of Bilcai and Kamae and further in
view of Smith. Id. at 8.
ANALYSIS
To resolve this appeal, we focus on the Appellant’s arguments that
identify error and on the Examiner’s determinations that relate to the error.
The Examiner rejects claim 1 as obvious over Elgimiabi in view of
Bilcai and Kamae. Final Act. 3. The Examiner finds that Elgimiabi teaches
an adhesive film comprising epoxy compound, thermoplastic resin, epoxy
curing agent, and blowing agent in percentages that overlap claim 1’s recited
ranges. Id. at 3. The Examiner finds that Elgimiabi teaches polyether
thermoplastic resins but is silent with respect to the thermoplastic resin being
a polyethersulfone. Id. at 5. The Examiner finds that Kamae teaches a
polyethersulfone as a binder where the composite is used for aircraft parts
requiring high heat resistance. Id. The Examiner determines that a person

3 Appellant amended claim 1 to include the recitation “wherein the
thermoplastic resin is a polyethersulfone.” The polyethersulfone
thermoplastic resin was previously recited by claim 9. Claims 7–9 are now
cancelled. Appeal Br. 7.
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of ordinary skill would have found it obvious to form the adhesive film of
Elgimiabi where the thermoplastic resin is a high glass transition
temperature material such as polyethersulfone to have high heat resistance as
taught in Kamae. Id.
Appellant persuasively argues that the Examiner has not adequately
established that a person of skill in the art would have selected Kamae’s
polyethersulfones for Elgimiabi’s thermoplastic resin. Appeal Br. 4–5. In
particular, Elgimiabi consistently teaches that its thermoplastic resin must
have a softening point between 60º and 140º C (and most preferably
between, for example, 85º and 95º C). See, e.g., Elgimiabi ¶¶ 12, 15, 22, 23,
73. When Elgimiabi lists preferable suitable thermoplastic resins, it does not
identify polyethersulfone as a possibility. Id. at ¶¶ 23, 24. Elgimiabi also
explains that, in Elgimiabi’s parlance, softening point is defined as glass
transition temperature (Tg) value. Id. at ¶ 13; see also Ans. 11 (Examiner
agrees that “Tg and softening point are interchangeable terms” in Elgimiabi).
The preponderance of the evidence supports that polyethersulfone has
a glass transition temperature well above Elgimiabi’s highest acceptable Tg
value. In the Appeal Brief’s evidence appendix, Appellant provides
evidence that polyethersulfone’s Tg is between 220º and 230º C. Moreover,
Kamae states that polyethersulfone has “a high glass transition temperature.”
Kamae ¶ 80. The Examiner does not provide any evidence that the Tg of
polyethersulfone is in Elgimiabi’s 60º to 140º C range.
The Examiner correctly notes that Kamae teaches use of a “plasticizer
component to adjust the glass transition temperature to a value within an
appropriate range.” Ans. 5 (citing Kamae ¶ 81). Kamae’s suggested
plasticizer, however, is preferably an epoxy resin such as, e.g., bisphenol A.
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Kamae ¶ 81. Elgimiabi teaches use of such an epoxy (see, e.g., Elgimiabi ¶¶
12, 20) but maintains that the thermoplastic resin component nonetheless
must have a softening point between 60º and 140º C (see, e.g., id. at ¶ 12).
A person of skill in the art, therefore, would not have understood Elgimiabi
and Kamae, read together, as teaching that inclusion of epoxy resin would
negate Elgimiabi’s softening point requirement for its resin component.
The Examiner also argues that Appellant’s Specification as well as
dependent claim 6 suggest that polyethersulfone should have a softening
point between 60º and 150º C. Ans. 12. While we agree that the
Specification could be understood as making such an implication, the
Specification is written in terms of “some embodiments” such that the
polyethersulfone is not necessarily the same embodiment that describes a
thermoplastic resin with a softening point between 60º and 150º C. Spec.
1:9–32. With respect to claim 6, Appellant agrees that claim 6 “represents a
null set” and states that Appellant will seek to cancel claim 6. Reply Br. 3.
Considering the evidence before us as a whole, claim 6 and the
Specification’s statements do not outweigh the other evidence before us
indicating that polyethersulfone has a glass transition temperature higher
than 140º C.
Because the Examiner has not adequately established that a person of
skill in the art would have, as the Examiner proposes, used polyethersulfone
for Elgimiabi’s thermoplastic resin, which requires a softening point (Tg)
below 140°C, we do not sustain the Examiner’s rejection of claim 1.
Because the Examiner’s treatment of the dependent claims does not cure this
error, we also do not sustain the Examiner’s rejection of claims 2–6 and 10–
25.
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DECISION
For the above reasons, we reverse the Examiner’s rejections of
claims 1–6 and 10–25.
REVERSED