Ex Parte 5587236 et al

Board of Patent Appeals and Interferences

Jan 5, 2010

90008676 (B.P.A.I. Jan. 5, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DONNELLY CORPORATION,
Patent Owner and Appellant
____________

Appeal 2009-014598
Reexamination Control 90/008,676
Patent 5,587,2361
Technology Center 3900
____________

Decided: January 5, 2010
____________

Before TERRY J. OWENS, CAROL A. SPIEGEL, and
ROMULO H. DELMENDO, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL

1 The patent under reexamination (hereinafter the “‘236 Patent”) issued to
Raj K. Agrawal, Niall R. Lynam, and James K. Galer on December 24, 1996
from Application 08/438,612 filed on May 10, 1995, which in turn is a
divisional of Application 07/773,236 filed on October 9, 1991.
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Donnelly Corporation, the owner of the patent under reexamination,
appeals under 35 U.S.C. §§ 134(b) and 306 from a final rejection of claims
1-48 (Appeal Brief filed April 17, 2009, hereinafter “App. Br.,” at 2; Final
Office Action mailed December 22, 2008).2 We have jurisdiction under 35
U.S.C. §§ 134(b) and 306.
We REVERSE.

STATEMENT OF THE CASE
This reexamination proceeding arose from a third-party request for ex
parte reexamination filed by 3M Innovative Properties Company of St. Paul,
Minnesota (Request for Ex Parte Reexamination filed on May 21, 2007).
In prior Application 07/773,236, from which the ‘236 Patent claims
divisional status, the Board affirmed the rejection of claims directed to a
method for attaching a vehicle accessory mounting button to a vehicular
windshield during lamination of the windshield panels based on a different
appeal record including, inter alia, different arguments and rebuttal evidence
(App. Br. 16-18). Ex parte Agrawal, Appeal No. 94-1957 (BPAI July 7,
1995).
Apart from a discussion of the prior Agrawal Board decision, the
Appeal Brief does not identify “other prior and pending appeals,
interferences or judicial proceedings . . . which may be related to, directly
affect or be directly affected by or have a bearing on” our decision (App. Br.

2 See Patent Assignment Abstract of Title, Reel 005879, Frame 0665, which
was entered into the record of this proceeding as “Title Report” on June 6,
2007.
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2). See 37 C.F.R. § 41.37(c)(1)(ii). The Examiner notes, however, that the
‘236 Patent is the subject of a stayed patent infringement action captioned
Magna Donnelly Corp. v. 3M Co., No. 2:07cv10688 (E.D. Mich.) (Ans. 3;
Litigation Search Report filed June 11, 2007).
We heard Patent Owner’s oral arguments on November 18, 2009, a
written transcript of which will be entered into the record in due course.
The ‘236 Patent states that the invention relates to a rearview
mirror/windshield arrangement comprising a specified non-elastomeric,
thermosetting, structural adhesive (‘236 Patent Specification, hereinafter
“Spec.,” col. 1, ll. 10-14 and col. 2, ll. 45-49; appealed claim 1). According
to the ‘236 Patent, the invention “provide[s] outstanding long-term adhesion
and good accessory assembly vibration performance even under rigorous
climate conditions while simultaneously being compatible with conventional
autoclaving processes used in windshield manufacturing” (col. 2, ll. 49-55).
Claim 1, which is illustrative of the subject matter on appeal, reads as
follows:
1. A mirror mounting button, windshield arrangement,
comprising:
a windshield, said windshield including an interior
surface;
a cured, non-elastomeric thermosetting, one-package,
structural adhesive in contact with and adhered to said interior
windshield surface, said adhesive having a modulus of elasticity
at 85° C. of at least about 10,000 psi, said structural adhesive
being a latent curing adhesive system capable of substantial
cure at a temperature below about 325° F. and requiring
exposure to a temperature in excess of about 125° F. before
substantial curing is achieved; and
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a mirror mounting button attached to said adhesive,
whereby said cured adhesive forms a bond between said
windshield and said mirror mounting button, wherein said
adhesive bond can support a weight greater than or equal to 100
grams.
(Claims App’x, App. Br. 71). Other independent claims, such as
claim 20, recite the use of a structural adhesive comprising an epoxy
resin and a latent hardener.
The Examiner relied upon the following as evidence of
unpatentability (Examiner’s Answer mailed June 5, 2009, hereinafter
“Ans.,” at 4, 9-15):
Ryan 3,131,251 Apr. 28, 1964
Dressler 3,504,878 Apr. 7, 1970
Aikens 4,254,931 Mar. 10, 1981
Morgan 4,364,595 Dec. 21, 1982
Stewart 4,593,878 June 10, 1986
Volkmann 4,931,125 June 5, 1990
Ono 5,160,780 Nov. 3, 1992
Werner H. Guttmann, Concise Guide to Structural Adhesives 4-5 (Reinhold
Publishing Corp. 1961) (hereinafter “Concise Guide”).
J. Shields, Adhesives Handbook 40-41 (CRC Press 1973) (hereinafter
“Adhesives Handbook”).
Structural Adhesives: Developments in Resins and Primers 60-63 (A. J.
Kinloch ed., Elsevier Applied Science Publishers 1986) (hereinafter
“Structural Adhesives”).
Patentees’ Admitted Prior Art (‘236 Patent, col. 1, ll. 15-54).
Appellant relies on the following as evidence supporting
nonobviousness:
37 C.F.R. § 1.132 Declaration of Niall R. Lynam filed December 28, 2007,
with Exhibits A-F, as follows:
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Ex. A: Magna Donnelly Technology Presentation (publication
status unknown).
Ex. B: Better Bonding for Mirror Buttons, Shift: The Journal of
Automotive Innovation, No. 3, 20-21 (3M Automotive 1997).
Ex. C: On for Good: New Structural Adhesive Tape Helps
Keep Mirror Buttons Where They Belong, Shift: The Journal of
Automotive Innovation, No. 1, 9 (3M Automotive 1996).
Ex. D: 3M Aerospace/Aircraft Adhesives,
http://solutions.3m.com/wps/portal/3M/en_US/Aerospace/Aircr
aft/Produ_Info/Prod_Catalog/ (December 21, 2007).
Ex. E: 3M Scotch-WeldTM Structural Adhesive Film AF 163-2
Technical Data 1-21 (3M 2004).
Ex. F: Mirror Button Bonding System, 3M Promotional
Presentation (publication date unknown).

The Examiner rejected the claims under 35 U.S.C. § 103(a) as
follows:
I. Claims 1-4, 10-14, 20-24, 26-36, and 38-48 as unpatentable
over Ryan in view of Stewart, the admitted prior art, Aikens,
and the Adhesives Handbook (Ans. 9);
II. Claims 5-9 as unpatentable over Ryan in view of Stewart, the
admitted prior art, Aikens, the Adhesives Handbook, and
Dressler (Ans. 10);
III. Claims 25 and 37 as unpatentable over Ryan in view of
Stewart, the admitted prior art, Aikens, the Adhesives
Handbook, and the Concise Guide (Ans. 10);
IV. Claims 1-4, 10-14, and 20-48 as unpatentable over “the
admitted prior art and Ono” in view of Stewart, Volkmann,
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Morgan, the Adhesives Handbook, the Concise Guide, and
Structural Adhesives (Ans. 11-14); and
V. Claims 5-9 and 15-19 as unpatentable over “the admitted prior
art and Ono” in view of Stewart, Volkmann, Morgan, the
Adhesives Handbook, the Concise Guide, Structural Adhesives,
and Dressler (Ans. 14-15).

ISSUES
The Examiner concedes that the mirror-windshield structure described
in Ryan or “the admitted prior art and Ono” includes an adhesive that differs
from the structural adhesive recited in the appealed claims (Ans. 8-9, 11-14,
17-19). Nevertheless, based primarily on the reasoning in the prior Agrawal
Board decision, the Examiner concludes that one of ordinary skill in the art
would have had a reason to select and use the recited structural adhesive – a
commercially available product – in view of its known characteristics that
make it suitable for the purpose described in the closest prior art (id. at 11-
14). As to secondary considerations of nonobviousness, the Examiner
largely dismisses Appellant’s arguments and rebuttal evidence on the notion
that “the party who is asserting objective evidence of non-obviousness bears
the burden of proof and attorney’s arguments do not take the place of
evidence in the record” (Ans. 23).
Appellant, on the other hand, contends that the applied prior art
references do not establish a prima facie case of obviousness because, inter
alia, “the prior art taken as a whole teaches away from the claimed invention
and towards use of the likes of an elastomeric PVB [polyvinyl butyral] or
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silicone rubber adhesive for attaching a mirror mounting button to a
windshield” (App. Br. 7). Furthermore, Appellant asserts that “there would
not have been any reasonable expectation of success in combining the
applied references [i.e., using the claimed adhesive in the prior art mirror-
windshield structures of Ryan or “the admitted prior art and Ono”]” (App.
Br. 7). Additionally, Appellant urges that “the Examiner ignored the
objective evidence of non-obviousness . . . not considered by the Board in
the appeal of the parent 07/773,236 [i.e., the prior Agrawal Board decision]”
(App. Br. 8).
Thus, the issues in the current appeal are:
(1) Has Appellant shown reversible error in the Examiner’s
conclusion that a person of ordinary skill in the art would have had a reason
to substitute the adhesive described in Ryan or “the admitted prior art and
Ono” with a commercially-available structural adhesive within the scope of
the appealed claims?
(2) If not, has Appellant shown reversible error in the Examiner’s
obviousness conclusion because it failed to properly consider all the
evidence anew including Appellant’s rebuttal evidence?

FINDINGS OF FACT (“FF”)
1. Ryan describes “the use of a sheet or layer . . . of polyvinyl
butyral resin or other suitable resinous material or adhesive
layer” (emphasis added) to secure a mirror assembly to a
windshield (col. 2, ll. 36-54).
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2. Patentees acknowledge, as prior art, a mirror-windshield
structure produced by laminating two glass panels using a PVB
interlayer adhesive while, at the same time, adhering a mirror
button to the windshield using a plasticized PVB adhesive film
(‘236 Patent, col. 1, ll. 15-53).
3. Ono also describes the use of a film-like or sheet-like, heat-
curable adhesive to bond a mirror base on a glass plate (col. 2,
ll. 8-19).
4. Ono teaches that preferred adhesives include thermosetting
resins (col. 4, ll. 1-11).
5. According to Patentees and Lynam, it was a longstanding but
unsolved problem that mirrors bonded to windshields using
prior art PVB adhesives were subject to fall-off or detachment,
especially in hot climates (‘236 Patent, col. 1, l. 63 to col. 2, l.
25; Lynam Decl. ¶¶ 14-15).
6. Stewart teaches that silicone material is a preferred material for
bonding a mirror to a windshield but also states that other
materials such as “polypropylene resins, various vinyl
materials, as for example, polyvinyl chloride, or polyvinyl
acetate, various acrylates, epoxy resins, and the like” (emphasis
added) may be used (col. 6, ll. 40-58).
7. Adhesives Handbook teaches the use of epoxy resins and curing
agents as epoxy adhesives (pp. 40-41).
8. Concise Guide teaches that epoxy adhesives are available as
single-component or two-component formulations and that
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these adhesives are capable of cementing a wide variety of
substrates including metals, plastics, rubbers, and glass (p. 5).
9. Volkmann teaches the use of a two-part epoxy adhesive to bond
a mirror mount to a laser-treated plate glass having projections
(Example 4, col. 11, l. 57 to col. 12, l. 27).
10. Volkmann further teaches that a “variety of epoxy adhesives
work” and that “any epoxy adhesive capable of forming a tight
polymer network, characterized by durability, good adhesion,
good water, chemical and/or heatresistant [sic] qualities can be
used” (col. 8, ll. 26-50).
11. Morgan teaches the use of an epoxy adhesive to bond a metal
stud to automobile glass where “the bonded stud can remain
strongly and securely attached to the glass even after exposure
to the environmental conditions to which an automobile or
other vehicle is typically exposed” (col. 5, ll. 9-19, 20-26, 44-
52).
12. Patentees describe the use of SCOTCH-WELDTM AF-163-2 as
a “most preferred adhesive” of the claimed invention (‘236
Patent, col. 3, ll. 53-57).
13. Patentees state that SCOTCH-WELDTM AF-163-2 is a blend of
a polymeric epoxy reaction product of molecular weight greater
than 700, epoxy resins, a dicyanodiamide, a non-volatile amide,
and n,n’-(methyl-1,3-phenylene)bis(n’,n’-dimethylurea) (‘236
Patent, col. 3, ll. 57-60).
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14. The ‘236 Patent Specification includes examples in which
SCOTCH-WELDTM AF-163-2 (invention) and PVB (prior art)
are compared in terms of sinusoidal loading in
tension/compression mode (±150 lbs. at 10 Hz) under various
sampling conditions and show that the invention provides
significantly superior results (col. 5, l. 55 to col. 7, l. 48).
15. The ‘236 Patent Specification further states that SCOTCH-
WELDTM AF-163-2 adhesives “exhibit superior vibration
performance [modulus of elasticity of greater than about 30,000
psi at 25°C and greater than about 10,000 psi at 85°C] when
compared to plasticized PVB [about 1000-1500 psi at 25°C and
260 psi at 85°C] and silicones [typically below 500 psi at 85°C”
(col. 7, ll. 49-62).
16. Exhibit D, which was submitted with the Lynam Declaration,
shows that SCOTCH-WELDTM adhesives were commercially
used as structural adhesives in aerospace applications,
exhibiting “structural strength comparable to welding” (Ex. D
at 1).
17. Lynam declares that SCOTCH-WELDTM AF-163-2 is used for
“metal-to-metal adhesion in aircraft” (Lynam Decl. ¶¶ 36, 38,
40).
18. Lynam testifies that the claimed adhesive provides an
unexpected result over the prior art (Lynam Decl. ¶¶ 62, 64; Ex.
A).
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19. Among other rebuttal evidence, Exhibit F includes test results
prepared by Third-Party Requester comparing what is
characterized as unexpectedly superior properties of an epoxy
adhesive comprising an epoxy resin and latent hardener relative
to an elastomeric PVB or silicone resin (Lynam Decl. ¶¶ 49,
62).
20. Lynam testifies that the claimed invention has enjoyed
significant commercial success, including its adoption on
almost all Ford cars and trucks (e.g., Lynam Decl. ¶ 29; Ex. A
at 13).
21. The level of ordinary skill in the art, as reflected in the
teachings of the prior art, indicate a relatively high degree of
technical knowledge and skill, including common sense and
extensive knowledge of the properties of available polymeric
adhesives.

PRINCIPLES OF LAW
The Supreme Court of the Unites States explained that “[w]hen a
work is available in one field of endeavor, design incentives and other
market forces can prompt variations of it, either in the same field or a
different one.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007).
The level of ordinary skill in the art is reflected by the teachings of the
prior art. In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (approving
the Board’s approach that the level of skill in the art was best determined by
the references of record).
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“When prima facie obviousness is established and evidence is
submitted in rebuttal, the decision-maker must start over.” In re Rinehart,
531 F.2d 1048, 1052 (CCPA 1976). “Though the [decision-maker] must
begin anew, a final finding of obviousness may of course be reached, but
such finding will rest upon evaluation of all facts in evidence, uninfluenced
by any earlier conclusion reached by an earlier board upon a different
record.” Id.

ANALYSIS
We agree with the Examiner that the teachings of the prior art
references, coupled with the knowledge and skill of one of ordinary skill in
the art, would have rendered the claimed subject matter prima facie obvious
(FF 12-17, 21). Specifically, Stewart, Adhesives Handbook, Concise Guide,
Volkmann, and Morgan (FF 6-11) would have informed a person of ordinary
skill in the art that curable epoxy adhesives, in either one-part or two-part
formulations, would be highly effective in bonding substrates such as
metals, plastics, rubbers, and glass, including mirrors to windshields. Thus,
we discern no error in the Examiner’s conclusion that the teachings of the
prior art would have provided a sufficient reason for one of ordinary skill in
the art to substitute the PVB or silicone adhesives of Ryan or “the admitted
prior art and Ono” with a commercially-available epoxy adhesive such as
SCOTCH-WELDTM AF-163-2 based on the reasonable expectation that
these adhesives would be interchangeable in the production of mirror-
windshield arrangements.
While Appellant argues that SCOTCH-WELDTM AF-163-2 was
intended for use in the aerospace industry for metal-to-metal bonding (App.
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Br. 24), epoxy adhesives were known as a class to be useful for mirror-
windshield applications (FF 6, 9-11). Thus, a person of ordinary skill in the
art would have considered all available epoxy adhesives that exhibited
strong bonding characteristics – characteristics that even satisfy rigorous
aerospace specifications. KSR, 550 U.S. at 417 (“When a work is available
in one field of endeavor, design incentives and other market forces can
prompt variations of it, either in the same field or a different one.”).
We are also unpersuaded by Appellant’s contention that “a person of
ordinary skill would have had no motivation to select [the claimed sub-genus
of adhesives] from the wide range of different and disparate adhesive
choices . . . .” (App. Br. 31). Again, the prior art teachings would have
informed a person of ordinary skill in the art that curable epoxy adhesives
would work. In re Corkill, 771 F.2d 1496, 1499-1500 (Fed. Cir. 1985)
(rejecting argument and declaration evidence asserting that the use of a
specific zeolite species was unobvious because it could not be predicted how
any candidate out of “an infinite number” of zeolites would work and that
testing would have been necessary, where the prior art taught that “hydrated
zeolites will work”); accord Ex parte Fu, 89 USPQ2d 1115 (BPAI 2008).
While we have determined that the Examiner properly discharged the
initial burden of establishing a prima facie case of obviousness, we cannot
uphold the Examiner’s final conclusion of obviousness on this record. As
pointed out by Appellant (App. Br. 17-18), much of Appellant’s relied-upon
evidence was dismissed in a conclusory fashion or ignored altogether. The
excerpt below from M.P.E.P § 716.01(B) (8th ed., Rev. 6, Sept. 2001) is
instructive:
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Where the evidence is insufficient to overcome the rejection,
the examiner must specifically explain why the evidence is
insufficient. General statements such as “the declaration lacks
technical validity” or “the evidence is not commensurate with
the scope of the claims” without an explanation supporting
such findings are insufficient. [Emphasis added.]

For example, Appellant now urges (based on evidence not discussed
in the previous Agrawal Board decision) that the use of SCOTCH-WELDTM
AF-163-2 epoxy adhesives, which no one disputes falls within the scope of
the appealed claims, provides unexpected results (FF 12-15 and 18). In
response, the Examiner states that Appellant did not show unexpected results
over silicone resins (Ans. 24). But this conclusory statement does not
explain why the relied-upon evidence, which included test results comparing
epoxy resin with silicone resin, is insufficient (FF 15 and 19). Moreover, the
Examiner’s own evidence suggests that epoxy resins would have
characteristics comparable to those of other resins, including Stewart’s
preferred silicone resins (FF 1-4 and 6).
The Examiner further argues that the evidence must be commensurate
in scope with the claims (Ans. 24). Again, however, it was incumbent upon
the Examiner to explain, in a meaningful way, why the evidence offered in
support of nonobviousness was not sufficient to reasonably support the
scope of the claims. Indeed, it is not entirely clear from the Examiner’s
position what additional experimentation would have been necessary to
address the Examiner’s concerns.
In a similar fashion, the Examiner dismissed Appellant’s evidence
offered in support of commercial success without any meaningful discussion
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based on facts (Ans. 25; FF 20). Thus, the actual bases for the Examiner’s
perceived deficiencies in the evidence are left to speculation.
The Examiner is, of course, correct that when a prima facie case of
obviousness is established, the burden of coming forward with rebuttal
evidence, such as unexpected results, is on Appellant. But when, as here,
such rebuttal evidence is offered, obviousness must be evaluated anew in
view of all facts in evidence (as distinguished from mere conclusory
statements), uninfluenced by any earlier decision. The Examiner failed to
carry out such an analysis based on facts. In re Rinehart, 531 F.2d at 1052.
Because the Examiner failed to specifically address the rebuttal
evidence offered in support of nonobviousness, we cannot uphold the
rejections.

CONCLUSION
On this record, Appellant has failed to show reversible error in the
Examiner’s conclusion that a person of ordinary skill in the art would have
had a reason to substitute the adhesive described in Ryan or “the admitted
prior art and Ono” with a commercially-available structural adhesive within
the scope of the appealed claims.
On this record, Appellant has shown reversible error in the
Examiner’s final obviousness conclusion because the Examiner failed to
properly consider all the evidence anew.

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DECISION
The Examiner’s decision to reject:
I. Claims 1-4, 10-14, 20-24, 26-36, and 38-48 as
unpatentable over Ryan in view of Stewart, the
admitted prior art, Aikens, and the Adhesives
Handbook;
II. Claims 5-9 as unpatentable over Ryan in view of
Stewart, the admitted prior art, Aikens, the
Adhesives Handbook, and Dressler;
III. Claims 25 and 37 as unpatentable over Ryan in
view of Stewart, the admitted prior art, Aikens, the
Adhesives Handbook, and the Concise Guide;
IV. Claims 1-4, 10-14, and 20-48 as unpatentable over
“the admitted prior art and Ono” in view of
Stewart, Volkmann, Morgan, the Adhesives
Handbook, the Concise Guide, and Structural
Adhesives; and
V. Claims 5-9 and 15-19 as unpatentable over “the
admitted prior art and Ono” in view of Stewart,
Volkmann, Morgan, the Adhesives Handbook, the
Concise Guide, Structural Adhesives, and Dressler
is reversed.
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).
REVERSED

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bim

FOR PATENT OWNER:
DONALD S. GARDNER
VAN DYKE, GARDNER, LINN & BURKHART
2851 CHARLEVOIX DR, S.E.
SUITE 207
GRAND RAPIDS, MI 49546

FOR THIRD-PARTY REQUESTER:
THOMAS M. SPIELBAUER
OFFICE OF INTELLECTUAL PROPERTY COUNSEL
3M INNOVATIVE PROPERTIES COMPANY
P.O. BOX 33427
ST. PAUL, MN 55133-3427