Ex Parte AttarwalaDownload PDFPatent Trial and Appeal BoardMay 25, 201613051400 (P.T.A.B. May. 25, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/051,400 31217 7590 Henkel Corporation One Henkel Way Rocky Hill, CT 06067 03/18/2011 05/27/2016 FIRST NAMED INVENTOR Shabbir Attarwala 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 ATTORNEY DOCKET NO. CONFIRMATION NO. LC-510/PCT/US 4471 EXAMINER NGUYEN, TUAN N ART UNIT PAPER NUMBER 3754 NOTIFICATION DATE DELIVERY MODE 05/27/2016 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): rhpatentmail@henkel.com trish.russo@henkel.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SHABBIR ATTAR WALA Appeal2014-001817 Application 13/051,400 1 Technology Center 3700 Before MICHAEL C. ASTORINO, NINA L. MEDLOCK, and MATTHEWS. MEYERS, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellant appeals under 35 U.S.C. § 134 from the Examiner's decision rejecting claims 1, 3, 4, 6-14, 20, and 21. Claims 2, 5, 18, and 19 have been cancelled and claims 15-17 have been withdrawn. Appeal Br., Claims App. We have jurisdiction over the appeal under 35 U.S.C. § 6(b ). We REVERSE. 1 According to the Appellant, "[ t ]he real party in interest is Henkel Corporation." Appeal Br. 2. Appeal 2014-001817 Application 13/051,400 Claimed Subject Matter Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A room temperature non-flowable, one part cyanoacrylate adhesive composition comprising: a. at least one a-cyanoacrylate compound; and b. a polymeric material selected from the group consisting of hydroxyl-modified aliphatic hydrocarbons, polyester-based rheological additives and combinations thereof, present in an amount sufficient to render said compositions non- flowable at temperatures up to about 180QF. Rejection Claims 1, 3, 4, 6-14, 20, and 21 are rejected under 35 U.S.C. § 103(a) as unpatentable over Misiak (WO 2007/049258 Al, pub. May 3, 2007) and Attarwala (US 6,727,320 B2, iss. Apr. 27, 2004). ANALYSIS The Examiner rejects independent claims 1 and 21 as unpatentable over the combined teachings of Misiak and Attarwala. Final Act. 2-3. The Examiner finds that Misiak teaches "a room temperature non-flowable, one part cyanoacrylate adhesive composition having the claimed cyanoacrylate composition (see claims 1-11) ... and a polymer as a thickener." Id. at 2. The Examiner finds that Misiak suggests that various polymers can be used as thickeners, but is silent as to the claimed polymeric material. Id. Turning to Attarwala to remedy the deficiency of Misiak, with regard to the claimed subject matter, the Examiner finds that Attarwala "teaches an adhesive composition having polymer equivalent such as polyhydroxyalkylacrylates, aliphatic, hydrocarbons, and etc." Id. (emphasis added). The Examiner 2 Appeal 2014-001817 Application 13/051,400 concludes "it would have been obvious to one having ordinary skill in the art ... to employ such a known polymeric material as disclosed by Attarwala as an alternative thickener in the composition of Misiak as suggested by Misiak." Id. at 2-3. Additionally, the Examiner determines that "[ o ]ther variables as claimed, such as temperature, the amount of compound/composition are well within the skill of an artisan at the time the invention was made." Id. at 3. The Appellant filed additional evidence in a "Supplemental Declaration under 37 C.F.R. § 1.132," filed February 13, 2013 (hereinafter the "Grant Supp. Declaration"), which the Examiner stated was considered. See Adv. Act. 1-2, mailed February 27, 2013. More specifically, the Examiner states in the Advisory Action: The Affidavit submitted 2113113 has been considered but deemed not persuasive over the prior art rejection. Applicant's argument filed 2/13/13 has been considered but deemed not persuasive since the adhesive composition as claimed is taught by Misiak as stated in the previous office action. Both the Misiak and Attarwala references are analogous art and the Attarwala reference is utilized for its teaching of specific equivalent polymeric material as claimed which Misiak did not go into detail; therefore, the combination is considered proper. It is not highsight [sic] to employ the Attarwala reference for showing the known equivalent specific composition of polymeric material at the time the invention was made. Adv. Act. 2 (emphasis added). Although the Examiner indicated that the Grant Supp. Declaration was considered, there is no indication that it was weighed properly as fact-based rebuttal evidence. See Appeal Br. 7-8. The Examiner states how the Grant Supp. Declaration was considered in the Answer: 3 Appeal 2014-001817 Application 13/051,400 The declaration under 37 CPR 1.132 filed 2/27 /13[, i.e., the Grant Supp. Declaration,] is insufficient to overcome the rejection of claims 1-14, 20 and 21 based upon rejections under 35 U.S.C. 103(a) as being unpatentable over Misiak in view of Attarwala as set forth in the last Office action because it fails to set forth facts. Dr. Grant merely studied the Misiak and Attarwala references and expresses his own opinion that the combination of references is not proper since they are non- analogous. Ans. 2 (emphases added). The foregoing statements indicate that the Examiner finds that the Grant Supp. Declaration lacks facts and merely expresses the opinion of the declarant. The Appellant argues that the Examiner's obviousness rejection should be reversed because the Examiner failed to properly weigh the rebuttal evidence. Appeal Br. 7-8, 15-17. "Prima facie obviousness is a legal conclusion, not a fact. Facts established by rebuttal evidence must be evaluated along with facts on which the earlier conclusion was reached, not against the conclusion itself." In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984) (quoting Jn re Rinehart, 531F.2d1048, 1052 (CCPA 1976)). The Appellant contends that the Examiner's consideration of the Grant Supp. Declaration is legally and factually erroneous because the declaration "is fact based." Reply Br. 1-2; see Appeal Br. 16. The Appellant further contends that in failing to weigh the facts in the Grant Supp. Declaration, the Examiner failed to reevaluate the totality of evidence in the record. Reply Br. 3. The Appellant also contends that the Examiner's combination is based on a finding that Attarwala describes a "polymer equivalent," but that "due to the unpredictability of how additives will affect the physical properties of the resulting cyanoacrylate adhesive composition, such as stability, fixture time, bond strength, and coloration, to name a few, there is 4 Appeal 2014-001817 Application 13/051,400 no 'equivalency,' just unpredictability." Appeal Br. 16; see id. at 10-12 (citing Grant Supp. Declaration, paras. 11-13). In this case, the Appellant contends that the Examiner's proffered combination of teachings from Misiak and Attarwala is unpredictable; and the Appellant supports this contention with rebuttal evidence, i.e., the Grant Supp. Declaration. Id. at 16; see id. at 11-12 (citing the Grant Supp. Declaration, paras. 11-13). The Appellant's argument is persuasive because the Grant Supp. Declaration includes facts (e.g., paragraphs 11-13) that have been not weighed by the Examiner as rebuttal evidence. As such, the Examiner did not consider anew all of the evidence presented as required. See In re Eli Lilly & Co., 902 F.2d 943, 945 (Fed. Cir. 1990) ("After a prima facie case of obviousness has been made and rebuttal evidence submitted, all the evidence must be considered anew" (emphasis omitted)). Moreover, the Examiner did not consider the arguments that rely on the declaration. Thus, the Examiner's rejection of claims 1, 3, 4, 6-14, 20, and 21 as unpatentable over Misiak and Attarwala is not sustained. DECISION We REVERSE the Examiner's decision rejecting claims 1, 3, 4, 6-14, 20, and21. REVERSED 5 Copy with citationCopy as parenthetical citation