tesa SE

Patent Trials and Appeals Board

Aug 25, 2020

2019005163 (P.T.A.B. Aug. 25, 2020)

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.
13/948,398 07/23/2013 Thorsten Krawinkel 101769-671 4396
27384 7590 08/25/2020
Briscoe, Kurt G.
Norris McLaughlin, PA
7 Times Square, 21st Floor
New York, NY 10036-6524
EXAMINER
HANDVILLE, BRIAN
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
08/25/2020 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):
jarcher@norris-law.com
nmanfredi@norris-law.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte THORSTEN KRAWINKEL,
ALEXANDER PRENZEL, and MINYOUNG BAI
____________

Appeal 2019-005163
Application 13/948,398
Technology Center 1700
____________

Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

CASHION, 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 l–23, 27, and 28. 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 tesa SE.
Appeal Br. 2.
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The invention relates to a pressure-sensitive adhesive tape. Spec. ¶ 2.
Claim 1 illustrates the subject matter on appeal and is reproduced below
(formatting added):
1. An adhesive tape comprising:
a carrier material comprising an acrylate-based foam layer
bearing at least one layer of pressure-sensitive adhesive, the
pressure-sensitive adhesive
(a) being composed of a mixture of at least two different
synthetic rubbers based on vinylaromatic block copolymers;
(b) comprising a resin that is not soluble in the acrylates
forming the foam layer; and
(c) being chemically uncrosslinked,
wherein the at least two different synthetic rubbers have a
block polystyrene content of at least 18 wt%.
The Examiner maintains the following rejections from the Non-Final
Office Action dated November 1, 2018:
I. Claims 1–23 rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Welke (US 2011/0315316 A1, published December
29, 2011), Waid (US 2010/0075132 A1, published March 25, 2010),
and De Craene (US 5,777,039, issued July 7, 1998).

II. Claims 27 and 28 rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Welke, Waid, De Craene, and Zmarsly (US
2011/0281964 A1. Published November 17, 2011).

Appellant presents arguments for claim 1 (Appeal Br. 6) and argues
claims 4, 27 and 28 as a group (id. at 9). We select claim 1 as representative
of the subject matter claimed. We also select claim 4 as representative of the
claims argued separately as a group. We therefore decide the appeal as to all
grounds of rejection based on the arguments Appellant makes in support of
the patentability of claims 1 and 4.
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OPINION
After review of the respective positions the Appellant presents in the
Appeal Brief and the Examiner presents in the Non-Final Office Action and
the Answer, we AFFIRM the Examiner’s rejections of claims 1–23, 27, and
28 under 35 U.S.C. § 103 for essentially the reasons the Examiner presents.
Our reasoning follows.
Claim 1
We refer to the Examiner’s Non-Final Office Action for a complete
statement of the rejection of claim 1. Non-Final Act. 3–8.
In summary, the Examiner finds that the combined teachings of
Welke and Waid suggest an adhesive tape comprising a foam layer carrier
bearing at least one layer of chemically uncrosslinked pressure-sensitive
adhesive that is composed of a mixture of at least two different synthetic
rubbers based on vinylaromatic block copolymers. Id. 3–7.2 The Examiner
finds that the combined teachings of Welke and Waid do not suggest a
pressure-sensitive adhesive having a polystyrene content of at least 18 wt%
for the at least two different synthetic rubbers. Id. at 7. The Examiner turns
to De Craene for the missing feature. The Examiner finds that De Craene
teaches it is well-known in the art to make pressure sensitive adhesive
composed of a mixture of at least two different synthetic rubbers based on
vinylaromatic block copolymers, where the block copolymer has an average
polystyrene content in the range of 10 to 50 wt%. Non-Final Act. 7–8; De

2 The Examiner relies primarily on Welke for the teaching of a pressure-
sensitive adhesive tape comprising a foam backing. Non-Final Act. 3;
Welke ¶ 1. For completeness, Waid is also directed to a pressure-sensitive
adhesive tape comprising a foam backing. Waid ¶¶ 9–11.
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Craene col. 3, ll. 10–14; col. 11, ll. 25–26. The Examiner determines that it
would have been obvious to one having ordinary skill in the art to modify
the block copolymer in the adhesive of the combined teachings of Welke
and Waid by providing a polystyrene content as claimed in view of De
Craene’s teachings with the expectation that such an adhesive will be
suitable as a pressure-sensitive adhesive composition. Non-Final Act. 8.
Appellant argues that Welke and Waid disclose crosslinked PSAs
while the claimed invention recites uncrosslinked PSAs. Appeal Br. 5.
Appellant further asserts that, while Waid discloses an adhesive layer which
is optionally cross-linked, Waid’s disclosure does not exemplify an
uncrosslinked adhesive but instead emphasizes that the adhesives must be
crosslinked. Appeal Br. 6.
Appellant’s arguments do not identify reversible error in the
Examiner’s determination of obviousness. It is well settled that a reference
may be relied upon for all that it discloses and not merely the preferred
embodiments as suggested by Appellant. See Merck & Co. v. Biocraft
Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“‘[A]ll disclosures of the
prior art, including unpreferred embodiments, must be considered.’”
(quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976))); In re
Fracalossi, 681 F.2d 792, 794 n.1 (CCPA 1982) (explaining that a prior art
reference’s disclosure is not limited to its examples). The disclosed
examples and preferred embodiments do not constitute a teaching away from
a broader disclosure or non-preferred embodiments. In re Susi, 440 F.2d
442, 446 n.3 (CCPA 1971).
As the Examiner explains, Waid teaches it is well known to use
crosslinked and uncrosslinked adhesives as pressure-sensitive adhesives on
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surfaces having low surface energy. Ans. 16–17; Waid ¶¶ 1, 13, 63. While
Waid may prefer crosslinked adhesives, Appellant has not explained
adequately why Waid’s disclosure of uncrosslinked PSAs as a non-preferred
embodiment limits Waid’s disclosure or teaches away from Waid’s broader
disclosure. Moreover, both Welke and Waid are directed to PSAs useful for
surfaces having low surface energy. Welke ¶ 4; Waid ¶ 63. Given this
disclosure, Appellant does not explain adequately why Waid’s uncrosslinked
PSAs would be unsuitable for Welke’s purposes.
Appellant asserts that the adhesives of Welke and Waid are both
different from the presently claimed pressure-sensitive adhesive because
they use different block polymers and have different polystyrene content
from the claimed content. Appeal Br. 5. Regarding the polystyrene content,
Appellant argues that Welke and Waid use block copolymers with small a
polystyrene content between 9.5 and 11.5 percent by weight while the
claimed invention recites a polystyrene content of at least 18 wt%. Appeal
Br. 5; Welke ¶ 134; Waid ¶ 79. Appellant additionally argues that De
Craene specifically refers to block copolymers suitable for hot melt adhesive
composition and, therefore De Craene’s teachings of a polystyrene content
of 10–50% would not be applicable to the adhesives of Welke and Waid.
Appeal Br. 8; De Craene col. 3, l. 13.
The Examiner does not rely on Welke for the teaching of a PSA
composed of a mixture of at least two different synthetic rubbers based on
vinylaromatic block copolymers. Non-Final Act. 4. Instead, the Examiner
relies on the teachings of Waid and De Craene for this feature. Id. at 4–8.
The Examiner finds that Waid teaches an uncrosslinked PSA composed of a
mixture of butadiene and styrene, which correspond to the synthetic rubbers
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disclosed in the Specification. Non-Final Act 4–6; Waid ¶¶ 24–25; Spec.
22. De Craene also teaches PSA formulations comprising a mixture of
butadiene and styrene. Non-Final Act. 8; De Craene col. 1, ll. 5–12, col. 3,
ll. 1–2; col. 11 (Example I). Appellant’s argument does not explain
adequately the difference between the claimed synthetic rubbers and those
taught by the combined teachings of the cited art.
Regarding the polystyrene content, we agree with the Examiner that
the polystyrene contents that Welke and Waid disclose are exemplary in
nature and do not limit the respective disclosures to such a range. Ans. 18.
Moreover, Appellant’s arguments do not consider adequately that the
Examiner relies on De Craene to meet the claimed polystyrene content
range. Id. In this regard, Appellant argues that De Craene’s polystyrene
content of 10–50% is applicable only to the De Craene’s hot melt adhesive
embodiments and, thus, one skilled in the art would not look to De Craene’s
teachings for a PSA composition. Appeal Br. 8. As the Examiner notes, this
argument ignores De Craene’s express disclosure that “[a] preferred use of
the present formulation is in the preparation of pressure-sensitive adhesive
(PSA) tapes.” Ans. 20; De Craene col. 11, ll. 24–26. In fact, De Craene’s
disclosed polystyrene content range is not limited to any particular type of
adhesive. See De Craene col. 3, ll. 10–18. Instead, this disclosure provides
one skilled in the art with a range of polystyrene content to adjust according
to the characteristics desired for a given adhesive.
Thus, Appellant’s arguments fail to identify error in the Examiner’s
determination of obviousness.
Appellant argues that evidence in the Specification shows that the
pressure-sensitive adhesive loses adhesive force when the block copolymers
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are crosslinked and used in an adhesive. Appeal Br. 6. According to
Appellant, Comparative Example 7 of the present Specification (cross-linked
block copolymers) and Inventive Example 1 (uncrosslinked block
copolymers), as shown in Table 2 shows that the adhesive force is reduced.
Id.
When evidence of secondary considerations is submitted, we begin
anew and evaluate the rebuttal evidence along with the evidence upon which
the conclusion of obviousness was based. In re Rinehart, 531 F.2d 1048,
1052 (CCPA 1976). The burden of establishing unexpected results rests on
the Appellant. Appellant may meet this burden by establishing that the
difference between the claimed invention and the closest prior art was an
unexpected difference. See In re Klosak, 455 F.2d 1077, 1080 (CCPA
1972). Appellant must establish the unexpected results with factual
evidence; attorney statements are insufficient to establish unexpected results.
See In re Geisler, 116 F.3d 1465, 1470–71 (Fed. Cir. 1997). Further, a
showing of unexpected results with evidentiary support must be reasonably
commensurate in scope with the degree of protection sought by the claims
on appeal. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re
Clemens, 622 F.2d 1029, 1035 (CCPA 1980).
We have considered Appellant’s evidence of unexpected results and
agree with the Examiner’s analysis that the evidence is insufficient to show
nonobviousness. Ans. 17.
We first note that it is not clear that Appellant has compared the
claimed invention against the closest prior art (Welke). We also agree with
the Examiner that Appellant does not explain why the single inventive
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adhesive PSA 1 is representative of the broad scope of adhesives claimed.
Ans. 17.
Thus, on this record, Appellant has not explained adequately why one
of ordinary skill in the art would have found the evidence relied upon
unexpected or why that evidence is reasonably commensurate in the scope
with the claims.
Claim 4
Claim 4 recites an adhesive tape wherein the acrylate forming the
foam layer is a thermally crosslinked polyacrylate and crosslinking of the
polyacrylate is done in the presence of at least one thermal crosslinker added
to the polyacrylate.
The Examiner finds that Welke teaches this feature. Non-Final Act.
9; Welke ¶ 59.
Appellant contends that Welke teaches polymerization of an acrylate
using a thermal initiator and not a thermally crosslinked polyacrylate,
wherein the crosslinking is done in the presence of a thermal crosslinker
added to the polyacrylate. Appeal Br. 9. According to Appellant, the
invention first forms the polyacrylate and subsequently crosslinks it via
thermal crosslinking. Id. Appellant further argues that Welke teaches away
from thermal crosslinking of the acrylic foam because it discloses curing the
foam and adhesive together via electron beam as well as chemically
crosslinking the foam. Appeal Br. 9 (citing to Welke ¶ 141).
Appellant’s arguments lack persuasive merit for the reasons the
Examiner presents.
Moreover, Appellant acknowledges that Welke teaches crosslinking
the polyacrylate to form the foam backing. Appeal Br. 9. Appellant also
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acknowledges in the Specification that “the skilled person is familiar with
the application for example of chemical/thermal crosslinking techniques.”
Spec. 4. Thus, Appellant has not explained adequately why one skilled in
the art, using no more than ordinary creativity, would not have been capable
of modifying Welke’s adhesive tape by using a foam that was thermally
crosslinked. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007)
(“A person of ordinary skill is also a person of ordinary creativity, not an
automaton.”); see also In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985)
(presuming skill on the part of one of ordinary skill in the art). Nor does
Appellant direct us to any objective evidence of criticality resulting from
thermally crosslinking the polyacrylate.
While Appellant contends that Welke teaches simultaneously
crosslinking the adhesive and foam via electron beam curing (Appeal Br. 9;
Welke ¶ 141) or chemically crosslinking the foam (Appeal Br. 9; Welke ¶
142), these are only an exemplary techniques used in Welke’s Examples A
and B. Appellant directs us to no portion of Welke that would lead one
skilled in the art to understand that these are the only techniques one skilled
in the art can use in practicing Welke’s invention. Moreover, Waid suggest
it is known in the art to apply a PSA layer onto a previously formed foam
backing. Waid ¶¶ 12, 59.
Accordingly, we AFFIRM the Examiner’s prior art rejections of
claims 1–23, 27, and 28 under 35 U.S.C. § 103 for the reasons the Examiner
presents and we give above.
Arguments not specifically addressed are deemed not persuasive for
the reasons the Examiner presents.

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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–23 103(a) Welke, Waid, De
Craene
1–23
27, 28 103(a) Welke, Waid, De
Craene, Zmarsly
27, 28
Overall
Outcome
1–23, 27,
28

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.

AFFIRMED