Ex Parte Binkley

Patent Trial and Appeal Board

Feb 29, 2016

12651546 (P.T.A.B. Feb. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/651,546 01/04/2010
26875 7590 03/02/2016
WOOD, HERRON & EV ANS, LLP
2700 CAREW TOWER
441 VINE STREET
CINCINNATI, OH 45202
FIRST NAMED INVENTOR
Jesse Alvin Binkley
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.
CRSC/65 9432
EXAMINER
CHANG, VICTORS
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
03/02/2016 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):
usptodock@whe-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JESSE AL VIN BINKLEY 1
Appeal2014-003374
Application 12/651,546
Technology Center 1700
Before BRADLEY R. GARRIS, PETER F. KRATZ, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
OGDEN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1, 3-7, 9, 10, and 13-15 in the above-identified
application. We have jurisdiction pursuant to 35 U.S.C. § 6(b ).
We AFFIRM.
BACKGROUND
Appellant's invention relates to "pressure-sensitive adhesives and
more particularly to products incorporating a pressure-sensitive adhesive
1 According to Appellant, the real party in interest is Carlisle Intangible
Company. Appeal Br. 3.
Appeal2014-003374
Application 12/651,546
layer to form peel-and-stick products for exterior applications." Spec. i-f 1.
Independent claim 1 is representative:
1. A pressure sensitive adhesive composition having low
temperature flexibility and tack at an application
temperature, the adhesive composition consisting essentially
of
0.5 to 15% by weight of a thermoplastic elastomer;
0.5 to 25% by weight ofisoflour;
0.5 to 25% by weight residual pitch;
10 to 50% by weight inert filler;
asphalt, and
optionally, oil.
Appeal Br. 16. Claims 5 and 6 are also independent. Claim 5 is directed to a
laminate that incorporates an adhesive composition similar to claim 1,
except that the weight range of the thermoplastic elastomer is 5-10%, the
range of oil is 0-12%, the range of isoflour is 2.5-7.5%, and the range of
residual pitch is 3-6%. See id. at 16. Claim 6 is directed to a laminate that
incorporates an adhesive composition similar to claim 1, except that the
weight range of isoflour is "Oto 25%," and the residual pitch is "pine pitch."
Id. at 16-17.
The Examiner maintains the following ground of rejection: claims 1,
3-7, 9, 10, and 13-15 2 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over US 4,600,635 [hereinafter Wiercinski] (issued July 15,
1986) in viewofUS 2010/0199885 Al [hereinafter Naidoo] (published Aug.
12, 2010) and US 5,308,898 [hereinafter Dawans] (issued May 3, 1994).
Final Act. 2-5.
2 The Examiner purportedly rejects claims 1-10 and 13-15. See Answer 2.
However, claims 2 and 8 were canceled by amendment prior to the appeal.
See Amendment and Response, Feb. 25, 2013.
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Application 12/651,546
Appellant argues claims 1, 3-7, 9, 10, and 13-15 as a group, see
Appeal Br. 6-12, and also provides separate arguments jointly for
independent claims 1 and 5, and separate arguments for dependent claim 15.
Therefore, consistent with the provisions of 37 C.F.R. § 41.37(c)(l)(iv)
(2013), we limit our discussion to claims 1 and 15. That discussion controls
the outcome for all other claims on appeal.
DISCUSSION
Upon consideration of the evidence on this appeal record and each of
Appellant's contentions raised in the Appeal Brief, we determine that a
preponderance of the evidence supports the Examiner's conclusion that the
subject matter of Appellant's claims is unpatentable over the applied prior
art. We sustain the Examiner's§ 103 rejections for essentially the reasons
set out by the Examiner in the Final Action and Answer. We add the
following for emphasis.
The independent claims contain the transitional phrase "consisting
essentially of." Appeal Br. 16-17. Generally, "[b ]y using the term
'consisting essentially of,' the drafter signals that the invention necessarily
includes the listed ingredients and is open to unlisted ingredients that do not
materially affect the basic and novel properties of the invention." PPG
Indus. Inc. v. Guardian Indus. Corp., 156 F.3d 1351, 1354 (Fed. Cir. 1998).
Not finding "a clear indication of basic and novel characteristics" that would
exclude the cited prior art, the Examiner construes the phrase "consisting
essentially of' as equivalent to "comprising," stating that "applicant has the
burden of showing that the introduction of additional steps or components
[to the claimed invention] would materially change the characteristics of
applicant's invention." Final Action 4--5.
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Application 12/651,546
Based on the claim language and the Specification, Appellant argues
that the basic and novel properties of the invention are "low temperature
flexibility and tack characteristics at an application temperature." Appeal
Br. 7. While we accept Appellant's characterization of the basic and novel
characteristics of the invention, we agree with the Examiner that Appellant
has not specified what particular additional components of the prior art
would materially change these characteristics.
In particular, independent claims 1, 5, and 6 require "asphalt" as a
component in the adhesive. Appeal Br. 16-17. The Examiner finds that
Wiercinski teaches the use of asphalt, both in the form of bitumen, and in the
form of gilsonite. See Final Action 2. Appellant argues that bitumen and
gilsonite are distinct, and that "[ o ]ne of ordinary skill in the art would not
have reasonably interpreted gilsonite as being or including asphalt." Appeal
Br. 8.
Assuming that bitumen and gilsonite are distinct, Appellant has not
directed our attention to evidence on this record sufficient to show that the
addition of gilsonite in the amounts taught by Wiercinski would materially
change the temperature flexibility and tack of the claimed invention. We
have carefully considered Appellant's argument that "Wiercinski notes that
gilsonite can negatively affect at least the low temperature flexibility of the
adhesive composition." Appeal Br. 10 (citing Wiercinski 5:5-9). However,
Wiercinski states that this effect on low temperature flexibility occurs for
"gilsonite concentrations in excess of about 10 parts by weight per 100 parts
by weight of bitumen," and for that reason recommends that "gilsonite
concentrations below this level are generally preferred." Wiercinski 5:4--9.
Moreover, the Examiner also finds that
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Application 12/651,546
both gilsonite and bitumens are asphalt materials, and
read on the element 'asphalt' in ... independent claims 1,
5 and 6, which do not distinguish or exclude any
particular type of asphalt. Even if the portion of minerals
in gilsonite is considered, it reads on the inert filler as
claimed. That is, all the components of Wiercinski' s
adhesive composition are identifiable with the adhesive
components recited in the claims."
Answer 7. In other words, the Examiner finds that even if gilsonite were to
be added to the claimed composition, the individual components of gilsonite
are attributable to either the claimed asphalt or inert filler. We have
carefully considered Appellant's arguments that gilsonite and asphalt are
distinct entities in the art, including the evidence found in the Shell Bitumen
Industrial Handbook which describes gilsonite as having 50-70% asphaltene
and 30-50% maltene, whereas bitumen has 80% asphaltene and 15%
maltene. See Appeal Br. 8-9. However, these arguments are not sufficient
to rebut the Examiner's finding, based on the present record, that there is not
likely to be any material difference, on a component-by-component basis or
in terms of basic and novel properties, between a mixture composed of
asphalt and an inert filler, and a mixture composed of asphalt, an inert filler,
and gilsonite (i.e., asphalt and inert filler in the form of minerals) in the
concentrations taught by Wiercinski. Answer 7-8. As explained above,
both such mixtures are encompassed by Appellant's claims.
The Examiner cites Naidoo as teaching the use of "residual pitch" as
required by claim 1. Id. at 3. The Examiner finds that Naidoo teaches the
use of pine tar pitch as part of an additive package that "improves the
adhesion of asphalt with mineral fillers." Id. (citing Naidoo i-f 10). Thus, the
Examiner concludes that "[i]t would have been an obvious modification to
one of ordinary skill in the art to modify Wiercinski' s adhesive with a
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workable amount of pine pitch, motivated by the desire to obtain an
improved adhesion." Id.
Appellant argues that Naidoo only teaches that the additive may
contain pine pitch as an alternative to gilsonite, but that "one of ordinary
skill would have observed that one or the other is sufficient to prove the
adhesive properties." Appeal Br. 10. Thus, Appellant argues that "persons
skilled in the art would not add another resin component, like 'pine pitch,' to
a composition that already has a disclosed resin component." Appeal Br. 11.
However, as the Examiner correctly finds, "Naidoo clearly teaches that pine
pitch and gilsonite can be used either alone or in combination." Answer 9.
Moreover, even if Naidoo teaches that pine pitch is redundant when gilsonite
is used, one of ordinary skill in the art would have had a reason to substitute
pine pitch for gilsonite in the composition of Wiercinski. See KSR Int 'l v.
Teleflex Inc., 550 U.S. 398, 401 (2007) (A "combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.").
We have also considered Appellant's argument that the Examiner has
failed to provide "a reasonable, affirmative, objective reason for one of
ordinary skill in the art to make the combination" of pine pitch as taught by
Naidoo with the composition disclosed in Wiercinski, and that the Examiner
has failed to provide evidence that the addition of pine pitch would "improve
the adhesion of the asphalt and mineral fillers." Reply Br. 5---6. However,
the Examiner correctly notes that Naidoo motivates the use of pine pitch "by
the desire to obtain an improved adhesion of asphalt with mineral fillers."
Answer 9. Naidoo lists pitch as a "rheology modifying component," Naidoo
i-f 29, a purpose of which is to "increase the viscosity or 'cohesive strength'
of asphalt at the temperature of the road." Id. i-f 7. Thus, at the time of
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filing, pine pitch had a known benefit as a rheology modifying component
for asphalt, to increase cohesive strength. Consequently, Appellant's
arguments do not persuade us of material error in the Examiner's
identification of a reason for one of ordinary skill in the art to have
combined pine pitch with the composition disclosed in Wiercinski.
Appellant cites a declaration by the inventor in which he presents his
expert opinion that if the additive package of Naidoo, including the
surfactant, were used as an additive to the Wiercinski composition, that "the
amine or modified amine surfactant described in Naidoo in paragraph [0013]
and the ionomeric elastomer of the adhesive composition of Wiercinski may
interfere with one another," and "oil in the adhesive composition may also
create problems when the surfactant is added to the adhesive." Binkley
Deel. (Mar. 7, 2012) i-fi-f 10-11 (emphasis added). This hypothesis, however,
is not supported by technical evidence. Moreover, the question is not
whether the entire additive of Naidoo can be added to the Wiercinski
compos1t10n, but whether Naidoo teaches the use of pine pitch as a useful
additive to asphalt compositions such as that of Wiercinski. See In re Keller,
642 P.2d 413, 425 (CCPA 1981) ("The test for obviousness is not whether
the features of a secondary reference may be bodily incorporated into the
structure of the primary reference .... Rather, the test is what the combined
teachings of those references would have suggested to those of ordinary skill
in the art.")
Dependent claim 15 requires that "the asphalt has a softening point
between about 85 °P and about 200 °P." Appeal Br. 18. The Examiner
finds that
[T]he wide range of softening point of useful asphalt for
making pressure sensitive adhesive for roofing
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application is deemed to be either inherent to the same
chemistry of asphalt, or an obvious routine optimization
to one of ordinary skill in the art, motivated by the desire
to obtain the same required adhesive properties for the
same end uses as the claimed invention."
Final Action 5. Appellant argues that "gilsonite has a much higher softening
temperature than that recited in claim 15." Appeal Br. 14. However, as
discussed above, Wiercinski teaches that the amount of gilsonite added to
the asphalt composition should be less than "10 parts by weight per 100
parts by weight of bitumen," and "[g]ilsonite concentrations of less than
about 5 parts by weight per 100 parts by weight of bitumen are even more
preferred." Wiercinski 5:4--9. Appellant does not direct us to any evidence
that a composition in which the amount of gilsonite is less than 5% of the
weight of bitumen would not be within the range of claim 15. Thus,
Appellant has not pointed to evidence sufficient to rebut the Examiner's
prima facie case of obviousness of claim 15.
For the above reasons, and those expressed by the Examiner, we
affirm the Examiner's decision to reject claims 1, 3-7, 9, 10, and 13-15.
DECISION
The Examiner's decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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