Christopher Lester et al.

Patent Trials and Appeals Board

Dec 22, 2020

2020002321 (P.T.A.B. Dec. 22, 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.
12/933,454 01/31/2011 Christopher L. Lester 4229-US; AD2010000704 9130
111494 7590 12/22/2020
Avery Dennison Corporation
Wendy A. Choi
8080 Norton Parkway
22D
Mentor, OH 44060
EXAMINER
BOYLE, KARA BRADY
ART UNIT PAPER NUMBER
1766
NOTIFICATION DATE DELIVERY MODE
12/22/2020 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):
matsgroup_patentdocket@averydennison.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_____________

Ex parte CHRISTOPHER L. LESTER, BRANDON S. MILLER,
MICHAEL J. ZAJACZOWSKI, WILLIAM L. BOTTORF, and
KYLE R. HEIMBACH 1
_____________

Appeal 2020-0023212
Application 12/933,454
Technology Center 1700
______________

Before LINDA M. GAUDETTE, DONNA M. PRAISS, and
JOHN A. EVANS, Administrative Patent Judges.

EVANS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s Non-Final Rejection of Claims 1, 13, 15–18, 40, 57, and 59.
Final Act. 1. We have jurisdiction over the pending claims under 35 U.S.C.
§ 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appeal Brief identifies the Avery Dennison
Corporation, as the real party in interest. Appeal Br. 1.
2 A telephonic Oral Hearing was conducted November 19, 2020. A
transcript will be made of Record.
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Application 12/933,454
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INVENTION
The claims relate to acrylic copolymers including controlled
placement of functional groups within the polymer structure. See Abstract.
Claims 1 and 16 are independent. Claim 1, reproduced below, is illustrative
of the invention.
1. A crosslinkable composition comprising:
at least one acrylic copolymer comprising two reactive
segments of controlled molecular weight and position and one
non-reactive segment of controlled molecular weight and
position;
wherein the reactive segments are positioned on either
side of the central non-reactive segment on the polymer chain,
the reactive segments comprising copolymers derived
from (i) one or more of the monomers of the non-reactive
segment and (ii) at least one polymerizable comonomer
comprising a crosslinkable functionality, the at least one
polymerizable comonomer comprising at least one monomer
derived from the formula [shown below]:

R
׀
H2C=C–X
where R is H or CH3 and X consists of a functional group
capable of crosslinking,
wherein the functional group is a carboxyl group,
wherein the one or more monomers present in the non-
reactive segment is the same type of monomer of the non-
reactive segment present in the reactive segments,
wherein the one or more monomers of the non-reactive
segment are present in the reactive segment in an amount
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effective for the reactive segments and the non-reactive
segment to be molecularly miscible before cure,
wherein the non-reactive segment of the acrylic
copolymer is derived from monomers selected from the group
consisting of C1 to about C20 alkyl, aryl, or cyclic acrylates, C1
to about C20 alkyl, aryl, or cyclic methacrylates, or mixtures
thereof.
PRIOR ART
Name3 Reference Date
Taniguchi US 7,407,694 B2 Aug. 5, 2008
REJECTIONS4 AT ISSUE5
1. Claims 1, 3, 13, 15–18, 40, 57, and 59 stand rejected under 35 U.S.C.
§ 112(a) or 35 U.S.C. § 112 (1st ¶), as failing to comply with the
written description requirement. Final Act. 3–4.
2. Claims 1, 3, 13, 15–18, 40, 57, and 59 stand rejected under 35 U.S.C.
§ 112(a) or 35 U.S.C. § 112 (1st ¶), as failing to comply with the
enablement requirement. Final Act. 4–7.
3. Claims 1, 13, 15–18, 40, 57, and 59 stand rejected under 35 U.S.C. §
102(b) as anticipated by Taniguchi. Final Act. 9–18.

3 All citations herein to the references are by reference to the first named
inventor/author only.
4 The present application is being examined under the pre-AIA first to invent
provisions. Final Act. 2.
5 Throughout this Decision, we refer to the Appeal Brief (“Appeal Br.”) filed
November 4, 2019, the Reply Brief (“Reply Br.”) filed January 30, 2020, the
Final Office Action (“Final Act.”) dated April 29, 2019, the Second or
Subsequent Examiner’s Answer dated December 17, 2019, and the
Specification (“Spec.”) filed July 27, 2018.
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ANALYSIS6
We have reviewed Appellant’s arguments in the Briefs, the
Examiner’s rejection, and the Examiner’s response to Appellant’s
arguments. Appellant’s arguments have persuaded us of reversible error in
the Examiner’s rejections.
WRITTEN DESCRIPTION
CLAIMS 1, 3, 13, 15–18, 40, 57, AND 59:
Claim 1 recites, inter alia, “wherein the one or more monomers of the
non-reactive segment are present in the reactive segment in an amount
effective for the reactive segments and the non-reactive segment to be
molecularly miscible before cure.”
The Examiner finds independent Claims 1 and 16 were amended
during prosecution to recite the above-discussed limitation which was not
present at filing. Final Act. 3. The Examiner finds the concept of molecular
miscibility is not linked to any amount of any particular monomers. Id. The
Examiner finds the term “effective amount” is not present in the instant
specification such that it is not possible to determine an “effective amount”
of monomer which makes the non-reactive and reactive segments
molecularly miscible before cure. Id. 3–4.
Appellant contends the Examiner is not using the correct written
description standard because the claimed subject matter need not be
described in haec verba in order for the disclosure to satisfy the written
description requirement. Appeal Br. 4 (citing In re Smith, 481 F.2d 910, 914
(CCPA 1973)). Appellant argues the original application discloses

6 The Examiner has withdrawn the rejection of Claims 16, 40, 57, and 59
under 35 U.S.C. 112 (2nd ¶), as indefinite. Ans. 15.
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copolymers containing reactive and non-reactive segments, wherein the
reactive segment contains monomers of the non-reactive segment in an
amount such that the resulting segments are molecularly miscible. Appeal
Br. 5. (citing Spec. ¶¶ 8, 22, 25; original claims 1, 21). Appellant argues
Examples 1, 3–9, and 14–22 describe the preparation of copolymers wherein
the one or more monomers of the non-reactive segment are present in the
reactive segment in an amount effective for the reactive and non-reactive
segments to be molecularly miscible as demonstrated by the presence of a
single glass transition temperature (Tg), which is indicative of miscibility,
i.e., the segments are not phase separated. Id. Appellant argues the
Specification shows by way of the description and working examples that
Appellant had possession of the later claimed subject matter. Id.
The Examiner’s Answer is difficult to parse because the Examiner
comingles findings related to Written Description with findings relating to
Enablement without distinguishing the two legal theories. See Ans. 15–23.
Appellant notes this lack of distinction. Appeal Br. 5 (“This statement
appears to be addressing the written description requirement, which is a
distinct and separate requirement from enablement, and which is addressed
above.”).
The Examiner finds “Appellant’s arguments filed on 10/3/2019 and/or
11/4/2019 are not persuasive.” Ans. 15. The Examiner finds the only
portion of the instant specification which discusses miscibility states:
As used herein, the term “molecularly miscible” means a
compound or mixture of compounds that exhibit properties in
the bulk state that are indicative of single phase behavior. With
respect to the acrylic copolymer, the observation of a single Tg
is indicative of polymer segment miscibility. The single Tg is
intermediate between those of the constituent polymer segments
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and varies monotonically between these values as the relative
amount of each segment changes.
Id. (quoting Spec. ¶ 22). Moreover, the Examiner finds Appellant only
discloses 68% butyl acetate as the non-reactive phase, but the claims are not
limited to butyl acetate. Id.
Appellant disputes the Examiner’s finding that “the concept of being
molecular miscible is not linked to any amount of any particular monomers.”
Reply Br. 2 (citing Ans. 3). Appellant argues the working examples
describe the preparation of copolymers wherein the one or more monomers
of the non-reactive segment are present in the reactive segment in an amount
effective for the reactive and non-reactive segments to be molecularly
miscible which specify the percent of the monomer consumed in preparing
the reactive and non-reactive segments. Id. (citing Spec., Examples 1, 3–9,
14–22). Appellant explains:
Figure 8 is a graph of tan (delta) as a function of temperature
for the polymers in Table 15, which have backbone
compositions of 68% butyl acrylate (BA) and 32% tBA with
varying numbers of MAA per end reactive segment. As Figure
8 shows, all four (4) polymers exhibit a single glass transition
temperature, which is indicative of miscibility, i.e., not phase
separated [sic, “separation”].
Reply Br. 2.
Appellant disputes the Examiner’s finding that the Specification fails
to teach what amounts of which monomers provide miscibility:
The Examiner alleges that the examples of the instant
specification do not state what amounts of which materials
provide molecular miscibility and which will not (Examiner’s
Answer, page 7, 1st paragraph). This is not the standard for
enablement. There is no absolute value. The effective amount
of non-reactive monomer that must be incorporated into the
reactive segment in order for the segments to be miscibility is
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dependent on the nature of the reactive and non-reactive
monomers. The concept of miscibility is related to polymer
compatibility. “Polymer Compatibility” refers to the total
miscibility, on a molecular scale, of two individual polymers or
in the present case to segments within the same polymer
(Polymer Science Dictionary, 1st Edition, Page 79, 1989).
Polymer compatibility can be influenced by a variety of factors,
including solubility parameters, enthalpy of mixing, hydrogen
bonding, surface forces, etc. Methods for calculating/predicting
polymer compatibility are well known in the art.
Reply Br. 5.
The Examiner finds Appellant admits: “not all polymers with the
same Tg are miscible.” Ans. 16 (citing Appeal Brief, filed October 20,
2019, 9). In view of this admission, the Examiner finds the Appeal Brief
indicates “undue experimentation” is required to determine the amounts of
which monomers will provide the claimed miscibility. Ans. 15.
We do not find the Record to comprise an appeal brief filed October
20, 2019. However the phrase “not all polymers with the same Tg are
miscible,” appears in Appellant’s Appeal Brief filed October 3, 2019:
Applicants never argued that a single Tg is solely dispositive of
miscibility. This is supported by the very definition of
molecular miscibility in paragraph 22 of the present application
that has been repeatedly cited by the Examiner. The definition
states, in part, “. . . , the observation of a single Tg is indicative
(emphasis added) of polymer segment miscibility”. This is
because while all miscible polymers exhibit a single glass
transition temperature (Tg), not all polymers with the same Tg
are miscible.
Appeal Brief filed October 3, 2019, 9. We do not read the accused phrase to
mean the presence of a single glass transition temperature (Tg) does not
indicate a miscible system.
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In view of the foregoing, we decline to sustain the rejection of Claims
1, 3, 13, 15–18, 40, 57, and 59 under the written description requirement of
35 U.S.C. § 112(a) or 35 U.S.C. § 112 (1st ¶).
ENABLEMENT
CLAIMS 1, 3, 13, 15–18, 40, 57, AND 59:
Independent Claims 1 and 16, as amended, recite, inter alia, “wherein
the one or more monomers of the nonreactive segment are present in the
reactive segment in an amount effective for the reactive segments and the
non-reactive segment to be molecularly miscible before cure.”
The Examiner finds none of the prosecution history disclosure
“provides any direction on which amounts of which types of monomers will
produce the molecular miscibility.” Final Act. 5. The Examiner finds the
cited examples only show butyl acrylate, in a particular amount (68%), as
the nonreactive segment, but that the claims are not limited to butyl acrylate,
so the working examples are not sufficient to provide direction to one of
ordinary skill in the art on how to make and use the instant invention. Ans.
16–17. Because the genus of non-reactive segments may contain hundreds
of thousands of different species, the Examiner asks how much, and what
combinations, of the other species would provide molecular miscibility?
Ans. 16–17.
Appellant discloses differential scanning calorimetry (DSC) is used to
determine a polymer’s glass transition temperature (Tg). Reply Br. 6. We
do not find DSC techniques constitute “undue experimentation.”
Appellant’s Specification discloses 18 working examples and discloses two
different methods of preparing the claimed polymers. Appeal Br. 9.
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In view of the foregoing, we decline to sustain the rejection of Claims
1, 3, 13, 15–18, 40, 57, and 59 under the enablement requirement of 35
U.S.C. § 112(a) or 35 U.S.C. § 112 (1st ¶).
ANTICIPATION BY TANIGUCHI
CLAIMS 1, 3, 13, 15–18, 40, 57, AND 59:
Appellant contends “Taniguchi’s block copolymer (A) is a
thermoplastic elastomer having a high Tg block and a low Tg block”.
Appeal Br. 11 (citing Taniguchi, inter alia, col. 4, ll. 43–57). Appellant
argues “[o]ne skilled in the art would know that thermoplastic elastomers
(“TPE”) ‘derive their properties and characteristics from the block
copolymerization of two or more segments of molecularly dissimilar
polymers.’” Id. (quoting Whelan,7 at 654–655). Appellant explains “[t]he
chemical composition of each phase strongly influences the performance of
the TPE. ‘The main factors affected are the thermal performance, physical
and chemical resistance properties, and weatherability as a direct result of
each phase’s glass transition temperature (Tg), melt transition temperature
(Tm), and any chain inconsistencies.” Id. (quoting Whelan).
The Examiner finds:
It is noted that the block copolymers and compositions
produced using them in Taniguchi meet the instantly claimed
acrylic copolymer composition and adhesive made therefrom.
Thermoplastic elastomers are but one intended use of the block
copolymer compositions of Taniguchi.
Ans. 23.

7 Whelan, D., Thermoplastic Elastomers in: Brydson’s Plastics Materials,
Edited by Marianne Gilbert, Butterworth-Heinemann; 8th edition (October
25, 2016), pp 654-655. (Evidence Appendix).
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Appellant argues:
The pending claims are drawn to a copolymer containing a non-
reactive segment and a reactive segment, wherein the reactive
segment contains an effective amount of the non-reactive
monomer such that the non-reactive segment and reactive
segment are molecularly miscible. In contrast, Taniguchi
discloses molecularly dissimilar blocks that have different Tg
and are immiscible.
Reply Br. 11–12.
Taniguchi discloses:
The glass transition temperature TgA of the (meth)acrylic
polymer block (a) and the glass transition temperature TgB of
the acrylic polymer block (b) in the block copolymer (A)
preferably satisfy the following relation: TgA>TgB
Taniguchi, Col. 10, ll. 43–48.
Thus, Taniguchi discloses a polymer which must have at least two
glass transition temperatures whereas Appellant claims a polymer having
only a single glass transition temperature.. Accordingly, Taniguchi fails to
anticipate the claimed invention.

Appeal 2020-002321
Application 12/933,454
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DECISION SUMMARY

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3, 13,
15–18, 40,
57, 59
112 (1st ¶)
or 112(a)
written description 1, 3, 13,
15–18, 40,
57, 59
1, 3, 13,
15–18, 40,
57, 59
112 (1st ¶)
or 112(a)
enablement 1, 3, 13,
15–18, 40,
57, 59
1, 13, 15–
18, 40, 57,
59
102 (b) Taniguchi 1, 3, 13,
15–18, 40,
57, 59
Overall
Outcome:
1, 3, 13,
15–18, 40,
57, 59

REVERSED