Ex Parte Attarwala et al

Patent Trial and Appeal Board

May 23, 2018

14663825 (P.T.A.B. May. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/663,825
31217 7590
Henkel Corporation
One Henkel Way
Rocky Hill, CT 06067
03/20/2015
05/25/2018
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-530/US-CON 1020
EXAMINER
LEE, DANIEL H.
ART UNIT PAPER NUMBER
1746
NOTIFICATION DATE DELIVERY MODE
05/25/2018 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, ROSA M. DA VILA,
BENJAMIN M. SUROWIECKI, JR., STAN WOJCIAK,
ROGER J. GRISMALA, and LING LI
Appeal2017-008023
Application 14/663,825
Technology Center 1700
Before KAREN M. HASTINGS, DONNA M. PRAISS, and
JANEE. INGLESE, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant 1 requests our review under 35 U.S.C. § 134 of the
Examiner's final decision rejecting claims 1-20 under 35 U.S.C. § 103 as
being unpatentable over at least the basic combination of Wojciak (US
2003/0162857 Al, published Aug. 28, 2003), which expressly incorporates
1 Appellant is the applicant, Henkel IP & Holding GmbH, which is also
stated to be the real party in interest (Appeal Br. 2). While Appellant does
not identify any known related appeals (id.), the Examiner points out that the
parent application 11/995,043 was the subject of Appeal No. 2012-011737
(mailed Nov. 17, 2014) wherein we affirmed the Examiner's rejection of
similar subject matter over the same prior art applied herein.
Appeal2017-008023
Application 14/663,825
by reference O'Connor (US 4,440,910, issued Apr. 3, 1984) (Wojciak i-f 58),
and Woods (US 2003/0208002 Al, published Nov. 6, 2003). 2
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
Claim 1 is illustrative of the subject matter on appeal3:
1. A rubber toughened cyanoacrylate adhesive
composition, comprising:
(a) a cyanoacrylate component, and
(b) a rubber toughening agent consisting of (i) reaction
products of the combination of ethylene, methyl acrylate and
monomers having carboxylic acid cure sites, and (ii)
combinations of (i) and dipolymers of ethylene and methyl
acrylate, wherein each of (i) and (ii) are substantially free of
release agents, anti-oxidants, stearic acid and polyethylene
glycol ether wax.
ANALYSIS
We have thoroughly reviewed each of Appellant's arguments for
patentability. We will sustain the Examiner's rejections for essentially those
reasons expressed in the Answer, including the Response to Argument
section, and we add the following primarily for emphasis.
2 The Examiner applied McDonnell (US 5,530,037, issued June 25, 1996) in
addition to Wojciak and Woods to claims 13 and 18.
3 Claim 1 of previous Appeal No. 2012-011737 differed by reciting in
place of clause (b) "a rubber toughening agent consisting essentially
of (a) reaction products of the combination of ethylene, methyl
acrylate and monomers having carboxylic acid cure sites, (b)
dipolymers of ethylene and methyl acrylate, or combinations of (a)
and (b ), and wherein the rubber toughening agent is free of release
agents, anti-oxidants, stearic acid and polyethylene glycol ether wax."
2
Appeal2017-008023
Application 14/663,825
Appellant's main argument-that the claimed composition is not
rendered obvious by either of Wojciak or Woods because neither reference
expressly discloses that the rubber toughening agent "is substantially free
of' the listed components as recited in claim 1 (Appeal Br. 5-8; Reply Br.
4--6}-is unavailing. On this record, and contrary to Appellant's position,
the Examiner's reliance on the failure of each reference to discuss the
prohibited components as a basis for concluding that the rubber toughening
agent is "substantially free" of such components is reasonable (e.g., Ans. 5,
6).
Furthermore, Woods provides explicit motivation for one of ordinary
skill in the art to exclude and/or limit such additives (Woods i-f 11,
(explaining that tougheners are needed that do not contain "interfering
functional groups, additives, or stabilizers that can shorten the shelf life of
the adhesive")).
Here, it must be noted that the record reflects some confusion on the
scope of claim 1 (Reply Br. 2; see also Appeal Br. 3, both stating that claim
1 requires (i) or (ii)). The Examiner applied both of Wojciak and Woods to
claim 1, because claim 1 plainly on its face requires both additives (i) and
(ii). Appellant's attempt to read the claim as alternatively requiring (i) or (ii)
is unavailing4 . It is also noted that, contrary to claim 1 in the previous
appeal, claim 1 does not require the rubber toughening component to be
"free" of the listed additives, it merely recites the component to be
"substantially free." Furthermore, there does not appear to be any guidelines
4 While it is redundant to list (i), then state that (ii) is (i) and the recited
dipolymers, the claim language plainly requires (i) and (ii).
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Appeal2017-008023
Application 14/663,825
in the Specification as to what maximum amounts would be permitted for
the toughening agent to be "substantially free" of the listed components.
Notably, in light of these circumstances, Appellant has not provided
any credible evidence or persuasive technical reasoning to refute the
Examiner's reasonable determination that that the rubber toughening agent
of either reference is "substantially free" of the listed components in claim 1
(e.g., Ans. 6 ("absent factual evidence that the excluded additives are
necessarily present" the Examiner maintains the position that the prior art's
silence indicates an absence of the additives); generally App. Br., Reply
Br.). In any event, as discussed above, Woods also provides a reason for
one of ordinary skill in the art to use rubber toughening additives that are
substantially free of said additives. Appellant also appears to admit that
rubber toughening agents free of such additives encompassed by (i) as
recited in claim 1 are now commercially available (Spec. i-f 8; Reply Br. 5
(the present invention encompasses use of "VAMAC VMX 1012 and VCD
6200, that do not contain those compounds")). 5
While Appellant points out that the Specification implies that the
VAMAC N-123â„¢ and VAMAC B-124â„¢ rubber tougheners relied upon by
the Examiner in the rejection (based on Wojciak's incorporation of
5 An applicant cannot defeat an obviousness rejection by asserting that the
cited references fail to teach or suggest elements which the applicant has
acknowledged are taught by the prior art. Constant v. Advanced Micro-
Devices, Inc., 848 F. 2d 1560, 1570 (Fed. Cir. 1988) ("A statement in a
patent that something is in the prior art is binding on the applicant and
patentee for determinations of anticipation and obviousness.") and In re
Nomiya, 509 F.2d 566, 571 n.5 (CCPA 1975) (A statement by an applicant
that certain matter is prior art is an admission that the matter is prior art for
all purposes).
4
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Application 14/663,825
0 'Connor which also exemplifies use of these) are not free of the listed
components, there is no factual evidence of record that these compounds are
not "substantially free" of the prohibited additives (Ans. 6; Reply Br. 6
("such evidence makes the Examiner's reliance on silence even more
dubious and ambiguous")). Indeed, Appellant's Specification discusses
V AMAC VCSâ„¢ rubber as a base rubber "from which the remaining
members of the V AMAC[â„¢] product line are compounded" and states that
"once former!', VAMAC VCSâ„¢ is "substantially free of processing aids"
such as those excluded by Appellant's claims (Spec. i-f 7; emphasis added). 6
It is reasonable to shift the burden to Appellant to provide evidence that
V AMAC N-123â„¢ and V AMAC B-124â„¢ do not contain the excluded
components listed in Appellants' claims. Cf In re Spada, 911 F.2d 705, 708
(Fed Cir. 1990); In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (It is well
settled that when a claimed product reasonably appears to be substantially
the same as a product disclosed by the prior art, the burden is on the
applicant to prove that the prior art product does not necessarily or
inherently possess characteristics attributed to the claimed product, and that
it is of no moment whether the rejection is based on § 102 or § 103 since the
burden is on the applicant is the same). In re Pearson, 494 F.2d 1399, 1405
6 Furthermore, while the Specification does state that "[ w ]hile V AMAC G
contains no fillers ... or stabilizers, it does contain processing aids" (Spec.
i-f 6), it does not affirmatively state that VAMAC N-123â„¢ and VAMAC B-
124TM contain any of the excluded components listed in the claims. It is also
noted that while paragraph 11 of the Specification states that processing aids
"are typically found in the V AMAC acrylic rubbers available from DuPont,
such as VAMAC G or VAMAC B-124" (emphasis added), this falls short of
the factual evidence necessary. Furthermore, "substantially free"
encompasses that some amount of these components may be present.
5
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Application 14/663,825
(CCPA 1974) (An attorney's arguments in a brief cannot take the place of
evidence).
Furthermore, as discussed above, Woods provides motivation to limit
the use of these components as recited in the claims (Woods i-f 11 ), and
Appellant admits commercially available rubber tougheners now exclude
these components.
Thus, Appellant's arguments that Wojciak (as evidenced by
O'Connor) and Woods fail to render obvious the composition as recited in
claim 1 are unavailing, and a preponderance of the evidence supports the
Examiner's reasonable position that the rubber toughening agent of each
reference is substantially free of the listed components in claim 1.
To the extent Appellant presents any additional arguments to address
dependent claims 13 and 18, a preponderance of the evidence supports the
Examiner's obviousness determination (Appeal Br. 8, 9 (wherein it appears
that Appellant mainly repeats the arguments presented for claim 1 ); Ans. 7).
Accordingly, we affirm the § 103 rejections on appeal.
DECISION
The decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a)( 1 ).
AFFIRMED
6