Ex Parte Bohm et al

Board of Patent Appeals and Interferences

Nov 30, 2009

11176131 (B.P.A.I. Nov. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte NICOLAI BOHM and SIEGFRIED KRUPKE
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Appeal 2009-008662
Application 11/176,131
Technology Center 1700
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Decided: November 30, 2009
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Before JEFFREY T. SMITH, BEVERLY A. FRANKLIN, and
KAREN M. HASTINGS, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
Statement of the Case
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-14. We have jurisdiction under 35 U.S.C. § 6.1
Appellants’ invention relates to a self-adhesive tape for masking
window flanges of automobiles. The purpose of the adhesive tape is to

1 In rendering this decision, we have considered the Appellants’ arguments
presented in the Appeal Brief dated October 2, 2007. An Oral Hearing was
held on November 3, 2009.
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protect the window flanges against overpainting during the subsequent
painting. (Spec. 1). Claim 1 is illustrative:
1. A self-adhesive tape for masking window flanges of
automobiles, comprising a backing which is formed of two films
disposed one above the other, the first film being composed of
soft plasticized polyvinyl chloride (sPVC) and the second of
polyethylene terephthalate (PET) and the two films being joined
to each other with a laminating adhesive comprised of a
crosslinked, tackifier-resin-free acrylic ester polymer having a
microshear travel of less than 60 µm (for a coat weight of 25
g/m2) and a delamination force of more than 3 N/cm, and a self-
adhesive mass applied to the backing.
The Examiner cited the following references in rejecting the
appealed subject matter:
EP 1095994 Bohm2 May 2, 2001
JP 05-192618 Shinji Aug, 8, 1993
The Examiner rejected the claims on appeal as follows:
Claims 1, 2, and 4-14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Bohm; and claim 3 stands rejected under 35 U.S.C. §
103(a) as unpatentable over Bohm and Shinji.

ISSUE
The issue before us is whether Appellants have shown that the
Examiner reversibly erred in rejecting the claims under 35 U.S.C. § 103(a).
We answer this question in the negative. Therefore, we affirm. The issue

2 The Examiner and Appellants have utilized non-published US Patent
Application No. 09/698,383 as an English language translation of Bohm,
EP 1 095 994, and a copy of this application has been submitted to the
present record. All citations to Bohm are directed to the ‘383 application.

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turns on whether a person of ordinary skill in the art would have selected a
laminating adhesive comprised of a crosslinked tackifier resin-free acrylic
ester polymer having a microshear travel of less than 60 µm (for a coat
weight of 25 g/m2) and a delamination force of more than 3 N/cm to join a
sPVC film to a PET film in an adhesive tape, as required by independent
claim 1.
FINDINGS OF FACT
The Examiner found that Bohm describes a laminating adhesive that
has the same structure and composition as the claimed invention. The
Examiner found that one skilled in the art of adhesive compositions would
have determined the microshear travel and delamination force properties
through routine optimization. Specifically, the Examiner states:
Regarding the microshear travel and delamination force of the
laminating adhesive, since US ‘383 [sic Bohm] discloses
essentially the same structure and composition and for the same
use as the claimed invention, these properties are deemed to be
obvious routine optimizations to one skilled in the art of
adhesive compositions, because the utility of the end product
dictates that there would be similar microshear travel and
delamination force properties. (Ans. 3-4).

Bohm discloses there is a problem with instances of delamination in
laminating adhesive that occur as a consequence of a cohesive weakness.
Bohm discloses the delamination problem is with partial splitting of
laminating adhesive due to the adhesive utilized to bond the PVC film to a
PET film. (pg. 3, ll. 12-28). Bohm discloses the laminating adhesive
comprises high molecular mass acrylic polymers which are suitable for
binding the film layers. (pg. 5, ll. 20-25). Bohm also discloses it is known
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to include tackifier resins in laminating adhesive to increase bond strength.
(pg. 5, ll. 25-29).
The Specification acknowledges that “[i]t is prior art to crosslink
self-adhesive masses based on acrylic esters in order to enhance their
technical adhesive properties, particularly the shear strength. The degree
of crosslinking at the same time also influences the peel strength, a
measure of the adhesiveness of the self-adhesive mass to a specific
substrate.” (Spec. 6, ll. 31-34).

PRINCIPLES OF LAW
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of
secondary indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d
1350, 1355 (Fed. Cir. 1998)). Therefore, we look to Appellants’ Brief to
show error in the proffered prima facie case. See 37 C.F.R. §
41.37(c)(1)(vii) (2007).
A claimed invention is unpatentable if the differences between it and
the prior art “are such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having ordinary
skill in the art.” 35 U.S.C. § 103. “The combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398,
416 (2007). The question to be asked is “whether the improvement is
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more than the predictable use of prior art elements according to their
established functions.” Id. at 417.

ANALYSIS
Appellants have not separately grouped the claims. Accordingly, we
confine our discussion to appealed claim 1, which contains claim
limitations representative of the arguments made by Appellants pursuant to
37 C.F.R. § 41.37(c)(1)(vii).3
Appellants contend that the Bohm does not suggest that the
disclosed laminating adhesive is crosslinked and does not suggest the
specific parameters recited in the claims. (App. Br. 6). Appellants contend
that Bohm discloses using a tackifier resin in the adhesive and the
examples include a tackifier resin in the laminating adhesive composition.
(App. Br. 5).
The Examiner recognizes that Bohm does not disclose the
microshear travel and delamination force properties of the laminating
adhesive. However, the Examiner contends that these properties are
deemed to be obvious through the use of routine optimizations by one
skilled in the art of adhesive compositions. (Ans. 3-4).
The subject matter of claim 1 does not provide an exact amount for
the crosslinker present in the laminating adhesive. The claimed invention
specifies properties for the laminating adhesive that are purportedly based
upon the degree of crosslinking. Appellants acknowledge that it is known

3 Only those arguments actually made by Appellants have been considered
in this decision. Arguments which Appellants could have made but chose
not to make have not been considered and are deemed to be waived. See
37 C.F.R. § 41.37(c)(1)(vii) (2009).
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by persons of ordinary skill in the art that crosslinking acrylic esters
adhesives affect adhesive properties such as shear strength and peel
strength. Consequently, Appellants have not rebutted the Examiner's
position that adjusting the degree of crosslinking is a known result
effective variable. In re Boesch, 617 F.2d 272, 276 (CCPA 1980)
(“[D]iscovery of an optimum value of a result effective variable in a
known process is ordinarily within the skill of the art.”); In re Aller, 220
F.2d 454, 456 (CCPA 1955) (“[W]here the general conditions of a claim
are disclosed in the prior art, it is not inventive to discover the optimum or
workable ranges by routine experimentation.”).
Appellants’ arguments regarding the utilization of a tackifier resin in
a laminating adhesive composition are not persuasive. As set forth above,
the properties associated with the use of a tackifier resin are known to
persons of ordinary skill in the art. Consequently a person of ordinary skill
in the art would have recognized the properties that would have resulted by
excluding a tackifier resin from a laminating adhesive. The omission of a
feature disclosed by the prior art along with its attendant function or
advantage is a matter of obviousness for one of ordinary skill in the art. In
re Thompson, 545 F.2d 1290, 1294 (CCPA 1976); In re Kuhle, 526 F.2d
553, 555 (CCPA 1975); In re Marzocchi, 456 F.2d 790, 793 (CCPA 1972).
Appellants presented arguments allegedly directed to separately
rejected claim 3 (App. Br. 7). This discussion does not specifically address
the rejection as set forth by the Examiner. Consequently, Appellants have
not shown the error in the Examiner's rejection.
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Appellants’ discussion of the examples in the present record are not
persuasive of error in the Examiner’s stated rejections. The claimed
invention is not limited to the scope of these examples.
Under these circumstances, we cannot conclude that the Appellants
have establish an error in the Examiner's determination that the appealed
subject matter is obvious under 35 U.S.C. § 103. Therefore, the rejections
of claims 1-14 under § 103 is affirmed.
ORDER
The decision of the Examiner rejecting claims 1-14 under 35 U.S.C.
§ 103(a), 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).

AFFIRMED

PL Initial:
sld

WILLIAM C. GERSTENZANG
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