Ex Parte Bany et al

Board of Patent Appeals and Interferences

Sep 25, 2007

10147015 (B.P.A.I. Sep. 25, 2007)

The opinion in support of the decision being entered today
not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte STEPHN W. BANY,
JAMES P. DIZIO,
PATRICIA J.A. BRANDT,
JANICE R. MANORE and
JUDITH A. GREEN
____________

Appeal 2007-2144
Application 10/147,015
Technology Center 1700
____________

Decided: September 25, 2007
____________

Before EDWARD C. KIMLIN, CHUNG K. PAK, and PETER F. KRATZ,
Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1 through 7, 9 through 17, 19 through
23, 25, 26, and 28, all of the claims pending in the above-identified
application. We have jurisdiction pursuant to 35 U.S.C. § 6.
Appeal 2007-2144
Application 10/147,015

STATEMENT OF THE CASE
The subject matter on appeal is directed to applying a particular
release coating having low adhesion on a pressure sensitive adhesive
backing layer comprising a fibrous material (Specification 2-6). According
to page 6 of the Specification, examples of polymers used for this particular
release coating
are described in U.S. Pat. Nos. 5,214,119 (Brandt et al.),
5,290,615 (Tushaus et al.), 5,461,134 (Leir et al.), and
5,512,650 (Leir et al.), and also European Pat No. 0 380 236 B1
(Leir).
A particular example of a thermoplastic silicone-
containing polymer is a solvent-borne silicone polyurea, an
example of which is disclosed in U.S. Pat. No. 5,512,650 (Leir
et al.).
Another particular example of a thermoplastic silicone-
containing polymer is a water-borne or water-dispersible
silicone polyurea, an example of which is disclosed in EP Pat.
No. 0 380 236 B1 (Leir).
This release coating allows a roll of tape to be unwound without the
undesirable transfer of adhesive to the backing layer (Specification 1).
Further details of the appealed subject matter are recited in representative
claim 11 reproduced below:
1. An article comprising:

a porous substrate comprising a fibrous material, wherein
greater than 75% of the fibers have a denier of less than 9; and

1 The Appellants state that “[a]ll claims stand or fall together”(Br. 2).
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Application 10/147,015

a release coating disposed on the fibrous material of the porous
substrate; wherein the release coating comprises a thermoplastic
silicone-containing polymer comprising at least about 30% silicone
segments and 1-5% carboxylic acid moieties, wherein the
thermoplastic silicone-containing polymer is deposited out of a
composition comprising water; and wherein the release coating is
penetrated into no more than the top 20% of the fibrous material.

As evidence of unpatentability of the claimed subject matter, the
Examiner has relied upon the following references:
Seth US 6,129,964 Oct. 10, 2000
Leir EP 0 380 236 A2 Jan. 8, 19902
The Examiner has rejected claims 1 through 7, 9 through 17, 19
through 23, 25, 26, and 28 under 35 U.S.C. § 103(a) as unpatentable over the
combined disclosures of Seth and Leir.
The Appellants appeal from the Examiner’s decision rejecting the
claims on appeal under 35 U.S.C. § 103(a).

ISSUES
1. Does substantial evidence support the Examiner’s finding that
the prior art relied upon would have taught or suggested using a pressure-
sensitive adhesive backing layer containing the claimed fiber content within
the meaning of 35 U.S.C. § 103(a)?

2 Both the publication date and/or the teachings of EP 0 380 236 referred to
in the Answer dated June 30, 2006 and the Final Office dated December 1,
2005 indicate that the Examiner has relied on EP 0380 236 A2.
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Application 10/147,015

2. Does substantial evidence support the Examiner’s finding that
one of ordinary skill in the art would have been led to employ the claimed
release coating taught by Leir on Seth’s pressure-sensitive adhesive backing
layer within the meaning of 35 U.S.C. § 103(a)?

PRINCIPLES OF LAW, FACTS, and ANALYSES
Under 35 U.S.C. § 103, the factual inquiry into obviousness requires a
determination of: (1) the scope and content of the prior art; (2) the
differences between the claimed subject matter and the prior art; (3) the level
of ordinary skill in the art; and (4) secondary consideration (e.g., unexpected
results). Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18,
148 USPQ 459, 467(1966). “[A]nalysis [of whether the subject matter of a
claim would be obvious] need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ.” KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727, 1740-741,
82 USPQ2d 1385, 1396 (2007) quoting In re Kahn, 441 F.3d 977, 988,
78 USPQ2d 1329, 1336-337 (Fed. Cir. 2006); see also DyStar Textilfarben
GmBH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1361,
80 USPQ2d 1641, 1645 (Fed. Cir. 2006)(“The motivation need not be found
in the references sought to be combined, but may be found in any number of
sources, including common knowledge, the prior art as a whole, or the
nature of the problem itself.”); In re Bozek, 416 F.2d 1385, 1390, 163 USPQ
545, 549 (CCPA 1969)(“Having established that this knowledge was in the
art, the examiner could then properly rely, as put forth by the solicitor, on a
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Appeal 2007-2144
Application 10/147,015

conclusion of obviousness ‘from common knowledge and common sense of
the person of ordinary skill in the art without any specific hint or suggestion
in a particular reference.’”).
Applying the above principles of law to the present situation, we
determine that substantial evidence supports the Examiner’s finding that the
prior art relied upon would have directed one of ordinary skill in the art to
the claimed subject matter within the meaning of 35 U.S.C. § 103. As is
apparent from the Brief, the Appellants do not dispute the Examiner’s
finding that Seth teaches applying a release coating on a porous backing
layer containing a fibrous material for a pressure-sensitive adhesive.
Compare Answer in its entirety with Br. and Reply Br. in their entirety.
Rather, the Appellants contend that Seth does not teach or suggest greater
than 75% of the fibers employed in forming the backing layer as having a
denier of less than 9 (Br. 9-15). In support of this contention, the Appellants
refer to Seth’s Comparative Example 3 which shows a release coating coated
backing layer made of 100% 9 denier polypropylene fibers adhering too
strongly to a pressure sensitive adhesive such that the adhesive becomes
contaminated by the fibers of the backing layer (e.g., Br. 10).
Although Seth prefers a pressure-sensitive adhesive porous baking
layer made of at least 25 percent by weight of fibers from 15 to 30 denier,
the Examiner has correctly found that it does not preclude employing a
pressure-sensitive adhesive porous backing layer having the claimed fiber
content (Answer 3 and 7). Specifically, we observe that under the
subheading “DETAILED DESCRIPTION OF THE PREFERRED
EMBODIMENTS,” Seth teaches that:
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Application 10/147,015

Preferably, this backing layer is a continuous film so as to also
prevent adhesive migration from the adhesive layer into and
through the nonwoven backing layer. This results in less
contamination of the overlying non-woven pressure sensitive
adhesive tape… and corresponding better adhesion to substrates
to which this loop tape fastening material is subsequently
applied. Generally, the nonwoven backing layer should have at
least 25 percent by weight….of fibers from 15 to 50 denier,
preferably 15 to 30 denier with the remainder comprising fibers
less than 15 denier, preferably from 3 to 9 denier. [Emphasis
added.]

Consistent with the above broad description of the preferred embodiments,
Seth also claims a nonwoven backing layer containing an unspecified
amount of 15 to 30 denier fibers (col. 7, ll. 35-43). Consequently, we concur
with the Examiner that Seth’s disclosure as a whole would have suggested to
one of ordinary skill in the art to employ, inter alia, a nonwoven pressure-
sensitive adhesive backing layer having the claimed fiber content (little less
than 25 percent by weight of fibers from 15 to 30 denier and the remainder
(greater than 75%) comprising 3 to 8.9999 denier). In re Lamberti, 545 F.2d
747, 750, 192 USPQ 278, 280 (CCPA 1976)(“[A]ll disclosures of the prior
art, including unpreferred embodiments, must be considered.”). Moreover,
we note that at least one preferred fiber content of Seth’s backing layer, i.e.,
at least 25% by weight of fibers from 15 to 30 denier and 75% or less by
weight of fibers below 9 denier, is so close to the fiber content of the
claimed backing layer that both the backing layers taught or suggested by
Seth and recited in claim 1 are reasonably expected to have the same or
similar properties. Titanium Metals Corp. v. Banner, 778 F.2d 775, 783,
227 USPQ 773, 779 (Fed. Cir. 1985) (A prima facie case of obviousness
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exists when the prior art and claimed ranges do not overlap bur are close
enough such that one skill in the art would have reasonably expected to have
the same properties.)
Given the above findings, we determine that substantial evidence
supports the Examiner’s finding that Seth teaches or would have suggested a
porous backing layer containing the claimed fiber content. This is
especially true in this case since Leir relied upon by the Examiner further
teaches at page 9, ll. 19-30, that its release coating, unlike other release
coatings, can provide desired adherence strengths, thereby suggesting the
employment of the release coating taught by Leir to avoid the very problem
associated with the strong adherence discussed in Seth.
The Appellants contend that Seth and Leir would not have suggested
employing the claimed specific water dispersible polyorganosiloxane-
polyurea block copolymer release coatings, i.e., thermoplastic silicon-
containing polymers incapable of penetrating into more than the top 20% of
the backing material (e.g., Br. 6-9 and Reply Br. 2) . We do not agree.
As correctly found by the Examiner, Seth teaches employing
conventional release coatings on the top surface of its pressure sensitive
adhesive backing layer (Answer 3). Although Seth does not specify using
the claimed specific water dispersible polyorganosiloxane-polyurea block
copolymers as its release coating, there is no dispute that Leir teaches at
page 5 such water dispersible organopolysiloxane polyurea block
copolymers. Compare Answer 3 and Leir, p. 5, l. 4 to p. 6, l. 13, with
Appellants’ narrow claim 9. We find that Leir further teaches at page 7, ll.
1-7, and page 9, ll. 8-13 and 19-30, that:
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The organopolysiloxane-polyurea block copolymers of this
invention, useful as films or coatings, are prepared in and cast
from solvents. However, for many applications, solvents
cannot be tolerated for reasons of safety, toxicity, flammability
and environmental reasons. Further, many applications for
such films require water dispersibility. In one preferred
embodiment of the invention, the block copolymers of the
invention are rendered water soluble or water dispersible.
...

It has been discovered that these polymers are suitable for use
as release coatings for a variety of pressure-sensitive adhesives.
They have a high degree of difunctionality with little
contamination from monofunctional or nonfunctional siloxane
impurities, virtually eliminating re-adhesion problems. They
have good stability in solution, are film-forming, and have
unusually high strength plus desirable mechanical and
elastomeric properties. In addition, they do not require high
temperature curing or long processing time, a decided
advantage in pressure-sensitive tape manufacturing.
...

As mention previously, the segmented copolymers of this
invention may be prepared with a wide range of useful
properties through variations in the ratio of soft segments to
hard segments, the amount and nature of the chain extenders
employed, and the molecular weight of the polysiloxane
segment. These variations give rise to varying amounts of
release, i.e., from 10g/cm or less, to about 350 g/cm. Certain
copolymers are especially useful as low-adhesion backsizes
(LABs) for removable pressure-sensitive adhesives such as
masking tape.

Given the above teachings, we determine that substantial evidence
supports the Examiner’s finding that one of ordinary skill in the art would
have been led to employ the claimed release coating as the release coating of
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Appeal 2007-2144
Application 10/147,015

the pressure-sensitive adhesive backing layer of the type suggested in Seth,
motivated by a reasonable expectation of successfully obtaining the
advantages taught by Leir. Moreover, from the above teachings, one of
ordinary skill in the art would have reasonably expected that the claimed
release coating taught by Leir has the claimed minimal penetration property
from the teachings of Leir discussed above (Leir teaches that its release
coating has a high degree of difunctionality with little contamination from
monofunctional or nonfunctional siloxane impurities and is film-forming).
See also KSR, 127 S. Ct. at 1739, 82 USPQ2d at 1395 (“The combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.”). In any event, the desired
penetration property is an additional advantage that would have naturally
flowed from following the suggestion of Leir. Ex parte Obiaya, 227 USPQ
58, 60 (BPAI 1985) (holding that the recognition of another advantage
flowing naturally from following the suggestion of the prior art cannot be
the basis for patentability when the difference would otherwise be obvious),
Accordingly, based on the factual findings set forth in the Answer and
above, we determine that that the preponderance of evidence weighs most
heavily in favor obviousness within the meaning of 35 U.S.C. § 103.

ORDER
In view of the forgoing, the decision of the Examiner is
affirmed.

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Appeal 2007-2144
Application 10/147,015

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED

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