3M INNOVATIVE PROPERTIES COMPANY

Patent Trials and Appeals Board

Apr 15, 2021

2020003463 (P.T.A.B. Apr. 15, 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.
14/443,426 05/18/2015 Doreen Eckhardt 71049US008 2280
32692 7590 04/15/2021
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
CHANG, VICTOR S
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
04/15/2021 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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DOREEN ECKHARDT, REGINA SIKORA,
JAN U. WIENEKE, JAN D. FORSTER,
KERSTIN UNVERHAU, and FRANK KUESTER
Appeal 2020-003463
Application 14/443,426
Technology Center 1700
Before LINDA M. GAUDETTE, KAREN M. HASTINGS, and
LILAN REN, Administrative Patent Judges.
HASTINGS, 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 16–20, 24, 27, and 29–40.2 See Non-
Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as 3M Company.
Appeal Br. 2.
2 Claims 21–23 were inadvertently included in the Examiner’s rejection,
however, these claims were cancelled in the amendment filed Sept. 4, 2018.
Appeal 2020-003463
Application 14/443,426

2
We reverse and enter a new ground of rejection.
CLAIMED SUBJECT MATTER
The claims are directed to a multilayer pressure-sensitive adhesive
(PSA) assembly. Claims 16 and 38, reproduced below, are illustrative of the
claimed subject matter:
16. A multilayer PSA assembly comprising:
i. a propylheptyl acrylate adhesive copolymer layer
comprising:
a) from 50 to 99.5 weight percent of 2-propylheptyl
acrylate as a first monomer;
b) from 1.0 to 50 weight percent of a second non-polar
monomer;
c) from 0.1 to 15 weight percent of a third polar acrylate
monomer; and
d) a tackifying resin in an amount from 3 to 100 parts per
100 parts of the copolymer,
wherein the tackifying resin is selected from the group consisting
of C5-based hydrocarbon resins, C9-based hydrocarbon resins,
C5/C9-based hydrocarbon resins, and any combinations or
mixtures thereof;
wherein the weight percentages are based on the total weight of
the copolymer;
and
ii. a second acrylate pressure sensitive adhesive foam layer.

38. A multilayer PSA assembly comprising:
i. a propylheptyl acrylate adhesive copolymer layer
comprising:
a) from 60 to 90 weight percent of 2-propylheptyl
acrylate;
b) from 10 to 30 weight percent of isobornylacrylate;
c) from 3.0 to 6.0 weight percent of acrylic acid; and
d) 0.05 to 1 weight percent of a crosslinker,
wherein the weight percentages are based on the total weight of
the copolymer;
Appeal 2020-003463
Application 14/443,426

3
and
ii. a second acrylate pressure sensitive adhesive foam layer.
Independent claim 37 similarly recites a multilayer PSA assembly as
in claim 38 with, for example, broader ranges of components a, b, and c set
forth (Claims Appendix 13, 14).

REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Zajaczkowski US 2010/0120931 A1 May 13, 2010
Bartholomew US 2012/0171915 A1 July 5, 2012

REJECTION
Claims 16–20, 24, 27, and 29–40 are rejected under 35 U.S.C.
§ 102(a) as being anticipated by Bartholomew and Zajaczkowski
(incorporated by reference in Bartholomew). Non-Final Act. 3.

OPINION
For the reasons presented by Appellant in the briefs, we REVERSE.
The § 102(a) rejections of independent claims 16, 37, and 38 on appeal rely
upon picking and choosing from various lists in Bartholomew. A
preponderance of the evidence supports Appellant’s position that
Bartholomew’s disclosure is insufficient to establish anticipation of the
compositional components of independent claims 16, 37, and 38 (Appeal Br.
7‒9; Reply Br. 2). Additionally, the ranges for the amounts of the 2-
propylheptyl acrylate, second non-polar monomer, and third polar acrylate
Appeal 2020-003463
Application 14/443,426

4
monomer components taught by Bartholomew overlap the recited ranges of
the relevant components of claims 16, 37, and 38 and therefore the Examiner
has not adequately explained how Bartholomew anticipates the claims for
this reason as well (Bartholomew ¶ 34).
“[A]nticipation under § 102 can be found only when the reference
discloses exactly what is claimed and that where there are differences
between the reference disclosure and the claim, the rejection must be based
on § 103 which takes differences into account.” Titanium Metals Corp. v.
Banner, 778 F.2d 775 (Fed. Cir. 1985) (Claims to titanium (Ti) alloy with
0.8% nickel (Ni) and 0.3% molybdenum (Mo) were not anticipated by,
although they were held obvious over, a graph in a Russian article on Ti-
Mo-Ni alloys in which the graph contained an actual data point
corresponding to a Ti alloy containing 0.25% Mo and 0.75% Ni.).

New Ground of Rejection of claims 16–20, 24, 27, and 29–40 under 35 USC
§ 103(a) as unpatentable over Bartholomew
Although we are in agreement with Appellant that the teachings of
Bartholomew do not anticipate the pending claims (generally Appeal Br.;
Reply Br. 2), given that the teachings of Bartholomew disclose and suggest
the use of the claimed 2-propylheptyl acrylate, the second non-polar
monomer, and the third polar acrylate monomer components, as well as the
claimed crosslinking agents and tackifying agents for a PSA (Ans. 3‒4), we
enter a new ground of rejection for claims 16‒20, 24, 27 and 29‒40 under 35
USC § 103(a) over Bartholomew.3

3 Bartholomew also has an equivalent WO document, WO 2011/038202 A1,
Appeal 2020-003463
Application 14/443,426

5
It is well established that when claimed ranges overlap or lie inside
ranges disclosed by the prior art, a prima facie case of obviousness is
established. In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005); In re
Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003); see also In re Geisler, 116
F.3d 1465, 1469–71 (Fed. Cir. 1997) (Claim reciting thickness of a
protective layer as falling within a range of “50 to 100 Angstroms”
considered prima facie obvious in view of prior art reference teaching that
“for suitable protection, the thickness of the protective layer should be not
less than about 10 nm [i.e., 100 Angstroms]”).
Bartholomew teaches or suggests all of the components of the claimed
multilayer PSA assembly (Ans. 3‒4). Bartholomew further teaches ranges
for the amounts of the 2-propylheptyl acrylate, the second non-polar
monomer (e.g., isobornylacrylate) and the third polar acrylate monomer
(e.g., acrylic acid) that overlap the recited ranges for these components as set
out in claims 16, 37 and 38 (Bartholomew ¶ 34).
Where the difference between the claimed invention and the prior art
is some range or other variable within the claims, Appellant must show
that the particular range is critical, generally by showing that the claimed
range achieves unexpected results relative to the prior art range. In re
Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). The burden of showing
unexpected results rests on Appellant 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) (“the

published March 31, 2011 (an earlier publication date). It is of record on the
IDS filed by Appellant on July 7, 2015. In this decision, citations to
Bartholomew are to its paragraphs in US 2012/0171915 A1.
Appeal 2020-003463
Application 14/443,426

6
burden of showing unexpected results rests on he who asserts them”).
Further, a showing of unexpected results supported by factual evidence 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).
Appellant relies on the Specification at page 13 as describing
“unexpected advantages of using a propylheptyl acrylate adhesive
copolymer with a tackifier” (Appeal Br. 7; Reply Br. 4). However, the
Specification at p. 13 ll. 19‒23 states that these tackifiers are “petroleum-
based resins such as the C5-based hydrocarbon resins, the C9-based
hydrocarbon resins, the C5/C9-based hydrocarbon resins, and hydrogenated
versions of any of these resins” (emphasis added). This general statement is
not sufficient to establish the criticality of the tackifiers. Additionally,
independent claims 37 and 38 do not require the presence of the tackifiers
that provide these alleged advantages. In any event, Bartholomew teaches
these same aromatic hydrocarbon resins based on C9, and C5 can be used in
their invention (Bartholomew ¶48). Still further, Appellant has not shown
how any evidence in the Specification is commensurate in scope with the
claims.
Having considered the evidence and reviewed Appellant’s arguments
in light of these legal standards, Appellant has not met its burden of showing
unexpected results.
Therefore, we set forth a § 103(a) rejection based on Bartholomew as
a NEW GROUND OF REJECTION pursuant to 37 C.F.R. § 41.50(b).
CONCLUSION
The Examiner’s § 102 rejection is REVERSED.
A new ground of rejection pursuant to 37 C.F.R. § 41.50(b) is made.
Appeal 2020-003463
Application 14/443,426

7

DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed New
Ground
16–20,
24, 27,
29–40
102(a) Bartholomew,
Zajaczkowski
16–20,
24, 27,
29–40

16–20,
24, 27,
29–40
103(a) Bartholomew 16–20,
24, 27,
29–40
Overall
Outcome
16–20,
24, 27,
29–40
16–20,
24, 27,
29–40

TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of rejection
Appeal 2020-003463
Application 14/443,426

8
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.

REVERSED
NEW GROUND OF REJECTION (37 C.F.R. § 41.50(b))