Ex parte Chao

Board of Patent Appeals and Interferences

Jun 22, 2001

07977834 (B.P.A.I. Jun. 22, 2001)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 26
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte HUNG YA CHAO
____________
Appeal No. 1996-1942
Application No. 07/977,834
____________

ON BRIEF
____________
Before WARREN, WALTZ, and LIEBERMAN, Administrative Patent Judges.
LIEBERMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the decision of the examiner
refusing to allow claims 1 through 26, which are all the claims on appeal in this
application. Claims 27 and 28 stand withdrawn from consideration as directed to a non-
elected invention. 37 CFR § 1.142(b). See the Final Rejection mailed May 13, 1994.
In addition an amendment under 37 CFR § 1.116 received on April 13, 1995,
amending claim 15, was not entered by the examiner. See the letter mailed May 8,
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Application No. 07/977,834
1995 denying entry.
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Application No. 07/977,834
THE INVENTION
The invention is directed to a microencapsulated adhesive composition, a method
for preparing the composition and a product prepared from the method, comprising an
acrylate or methacrylate monomer incorporated in a microcapsule. Other features of the
claimed subject matter are set forth in the following illustrative claims.
THE CLAIMS
Claims 1, 15, and 21 are illustrative of appellant’s invention and are reproduced
below:
1. A method of producing a microencapsulated adhesive comprising:
providing a mixture containing as a major component an alkyl acrylate
or methacrylate monomer, or a mixture thereof, and a free radical initiator;
microencapsulating said mixture of monomer and initiator;
heating said microencapsulated monomer and initiator for a time and at
a temperature sufficient to cause said monomer to polymerize inside said
microcapsules.

15. A microencapsulated adhesive composition comprising:
an adhesive produced from a monomer or monomers including as a
major component an alkyl acrylate or methacrylate, or a mixture thereof,
encapsulated in microcapsules, wherein said microencapsulated adhesive is initially
non-tacky but exhibits tacky properties upon application of external forces.
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Application No. 07/977,834
21. A microencapsulated adhesive composition produced by
microencapsulating a mixture containing as a major component an alkyl acrylate or
methacrylate monomer, or a mixture thereof, and a free radical initiator; followed
by heating said microencapsulated monomer and initiator for a time and at a
temperature sufficient to cause said monomer to polymerize inside said
microcapsules, thereby forming an adhesive that is initially non-tacky but exhibits
tacky properties upon application of external forces.
THE REFERENCES OF RECORD
As evidence of obviousness, the examiner relies upon the following references:
Ruus 3,429,827 Feb. 25, 1969
Wolinski et al. (Wolinski) 4,080,238 Mar. 21, 1978
Sawai et al. (Sawai) 4,254,201 Mar. 03, 1981
Dahm et al. (Dahm) 4,517,141 May 14, 1985
Ozono 4,588,639 May 13, 1986
THE REJECTIONS
Claims 1 through 8, 14 and 21 through 24 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Sawai in view of Ozono.
Claim 9 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over
Sawai in view of Ozono and further in view of Wolinski.
Claims 1, 2, 4, 6 through 8, 10, 12, 14 and 21 through 26 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Ruus in view of Ozono.
Claim 9 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over
Ruus in view of Ozono and further in view of Wolinski.
Appeal No. 1996-1942 5
Application No. 07/977,834
Claims 15 through 18 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Sawai.
Claim 20 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over
Sawai.
Claim 19 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over
Sawai in view of Ruus.
Claims 3, 5, 11, 13 and 25 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ruus in view of Ozono and further in view of Dahm.
OPINION
We have carefully considered all of the arguments advanced by the appellant and
the examiner, and agree with the appellant that the rejections of claims 1 through 14 are
not well founded. Accordingly, we reverse these rejections. We agree with the examiner
that the rejection of claims 15-26 are well founded. Accordingly, we sustain these
rejections.
As an initial matter, the appellant has argued that claims 1 through 14, claims 15
through 20, and claims 21 through 26 be considered separately. We agree.
Accordingly, we separately consider each of independent claims 1, 15 and 21, each
being representative of its respective grouping and being the only independent claims
present before us. See 37 CFR § 1.192(c)(5)(1993).
Appeal No. 1996-1942 6
Application No. 07/977,834
Claim Construction
Our initial inquiry is directed to the scope of the claimed subject matter. During
patent prosecution, claims are to be given their broadest reasonable interpretation
consistent with the specification, and the claim language is to be read in view of the
specification as it would be interpreted by one of ordinary skill in the art. In re Morris,
127 F.3d 1048, 1053-54, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Zletz,
893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989); In re Sneed, 710
F.2d 1544, 1548, 218 USPQ 385, 388 (Fed. Cir. 1983); In re Okuzawa, 537 F.2d
545, 548, 190 USPQ 464, 466 (CCPA 1976).
Our construction of the subject matter defined by appellant's claims 15 and 21 is
that they are drawn in product-by-process format. See generally, In re Thorpe, 777 F.2d
695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985). The language present in each claim
directed to “a microencapsulated adhesive composition,” requires that the claimed
composition be in the form of polymerized alkyl acrylate or methacrylate. Our position is
supported by the specification which states, “[t]he present inventor has found that
acrylate or methacrylate monomers can be microencapsulated by well-known
microencapsulation techniques, and then these monomers can be polymerized inside the
microcapsules to form adhesives.” See specification, page 2, lines 5-8. Accordingly, as
both independent claims 15 and 21 are directed to “a microencapsulated adhesive,” we
Appeal No. 1996-1942 7
Application No. 07/977,834
conclude that each of the above claims necessarily requires that the microcapsules contain
a polymer within the microcapsules. Furthermore as to claim 21, which states that a free
radical initiator is present and the polymerization occurs by heating, it is likewise sufficient
to meet the requirements of the claimed subject matter that an encapsulated polymer is
present. Stated otherwise, the claimed subject matter is directed to the resulting
polymer, and there is no reason to believe that the polymer would have different
physical characteristics depending on where or when the polymerization occurred.
The only apparent distinction between the adhesive composition of the claimed
subject matter is found in the functional limitation present in both claims 15 and 21,
wherein the adhesive present is, “initially non-tacky but exhibits tacky properties upon
application of external forces.” It is well settled however, that when appellant’s product
and that of the prior art appears to be identical or substantially identical, the burden shifts
to appellant to provide evidence that the prior art product does not necessarily or
inherently possess the relied-upon characteristics of appellant’s claimed product. In re
Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980); In re Best, 562 F.2d
1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977). Furthermore, the discovery of a
new property even when that property is unobvious from the prior art, cannot impart
patentability to claims directed to a known composition. In re Spada, 911 F.2d 705,
708, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Appeal No. 1996-1942 8
Application No. 07/977,834
Moreover, Ruus specifically discloses that, “[t]he encapsulation technique can also
be used in the preparation of pressure sensitive adhesives for application to placards,
envelopes, etc.[,] where it is necessary that the surface remain non-adhesive until
adherence is desired.” See Ruus, column 1, lines 54-57. We find that Ruus’ definition
of encapsulated pressure sensitive adhesives meets the functional limitation of the claimed
subject matter that the adhesive initially is non-tacky or non-adhesive as stated by Ruus
until adherence is desired. Thereafter, the pressing of an envelope to obtain closure is
reasonably an “external force” as required by the claimed subject matter. Having given
our construction of the claimed subject matter, we apply the above as follows.
“[T]he examiner bears the initial burden, on review of the prior art or on any
other ground, of presenting a prima facie case of unpatentability,” whether on the
grounds of anticipation or obviousness. In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992). On the record before us, the examiner relies
upon five distinct references and eight distinct rejections to establish a prima facie case of
anticipation or obviousness.
The Rejections over Sawai
We find that Sawai discloses a pressure sensitive adhesive toner for use in
electrostatic photography. See column 2, lines 25-27. The toner consists of a pressure
sensitive adhesive substance, a pigment and/or a magnetic substance. See column 2,
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Application No. 07/977,834
lines 45-47. Aggregates when impressed with a fixing pressure are broken and
deformed and become flowable upon impression of pressure thereon. See column 3,
lines 4-13. The pressure permits the adhesive to flow into gaps between solid particles
of pigment and/or magnetic substance which thereafter resolidifies upon release of the
pressure. See column 3, lines 14-18 and 41-45. We find that the tacky substances
include emulsion polymerized acrylate or methacrylate monomers selected from
monomers which include 2-ethylhexyl esters of acrylic or methacrylic acid. See column
3, lines 57-61 and Examples 11, 12, 19 and 20. We further find that the composition
of Sawai is thereafter encapsulated using encapsulating materials such as gum arabic,
gelatin, urea-formaldehyde polycondensate, and polyamide. See column 5, lines 7-39.
We conclude that the capsules of Sawai are the same as those of the claimed subject
matter. See claim 20, and specification, page 5, lines 7-12.
Two essential distinctions however, are found between the instant claimed subject
matter directed to the claimed method and the disclosure of Sawai. Each of the method
claims present in the claimed subject matter requires the presence of an acrylate or
methacrylate monomer or monomers, a free radical initiator and the application of heat.
Sawai, in contrast discloses the encapsulation of copolymers. The monomer or co-
monomers have previously been polymerized in all cases prior to encapsulation. See
Sawai Examples 11, 12, 19 and 20. Therefore, the disclosure of Sawai lacks the
Appeal No. 1996-1942 10
Application No. 07/977,834
requisite monomer, free radical initiator and the heating step required by claim 1
directed to a method and accordingly fails to establish a prima facie case of obviousness
with respect to any of the method claims before us. Accordingly, the Sawai reference
alone lacks essential method steps required by the claimed subject matter.
As to the secondary references to Ozono alone or further in view of Wolinski, the
deficiencies of Sawai are not remedied by either Ozono or Wolinski. Ozono discloses
microcapsules prepared by dispersing a hydrophobic acrylate or methacrylate monomer
or oligomer and partially polymerizing the composition by UV light. See Abstract and
column 1, lines 26-35. The acrylate and methacrylate monomers include 2-ethylhexyl
acrylate and methacrylate. See column 2, line 15. We find that the process disclosed by
Ozono is an improvement over the prior art, wherein interfacial polymerization is utilized
to form the walls of the microcapsule as in Sawai, in that the outer layer of the monomer
polymerizes to form the microcapsule walls and the inner layer of monomer remains in
the form of a monomer. See column 3, lines 18-29 and 43-48. A polymerization
initiator such as an organic peroxide may be added to the acrylate or methacrylate
monomer. See Ozono, column 3, lines 50-54. However, polymerization is initiated
only through the application of ultraviolet light in the absence of heat. Although, the
examiner has stated that “[h]eating would appear to be inherent or implicit in UV
radiation step of Ozono,” see Answer, page 7 and “[e]ven if it weren’t, it would further
Appeal No. 1996-1942 11
Application No. 07/977,834
have been obvious to use extraneous heating to speed up the polymerization,” id., there
is no evidence of record to support the examiner’s statement. In our view however,
there is no motivation to have combined the Ozono reference with Sawai. The materials
used in Sawai are already polymerized prior to microencapsulation. Hence the person
having ordinary skill in the art would not have modified the process of Sawai by the
utilization of either UV or an additional peroxide. Although, the examiner is suggesting
that the monomer system of Ozono replace the polymer system of Sawai, to form an
additional wall, we conclude however, that no suggestion or motivation is present to
combine the references as stated to provide for two walls particularly as Ozono is directed
to an improvement over the prior art which is directed to the walls disclosed by Sawai.
See Ozono, column 1 lines 10-18. We conclude that the examiner’s suggestion to
combine the references would defeat the purpose of Ozono’s invention.
As for Wolinski, we find the reference is directed to a cold setting adhesive wherein
only the activator for the system is encapsulated. See column 1, line 67 to column 2,
line 6. Indeed, the examiner relies upon Wolinski for the sole purpose of
providing the free radical initiator of claim 9, i.e., benzoyl peroxide. See
Answer, page 9. Accordingly, the rejection of claim 9 dependent on claim 1
remains deficient for the reasons stated supra with respect to Sawai alone.
As to the rejection of claim 15 on the grounds of anticipation and claim
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Application No. 07/977,834
21 on the grounds of obviousness, based upon our findings above and our
construction of the claimed subject matter, we conclude that Sawai in and of
itself meets each of the limitations of the claimed subject matter. We found
supra that Sawai disclosed emulsion polymerized, acrylate monomers
encapsulated in the same materials as that of the claimed subject matter and
disclosed in the specification. We further determined that claims 15 and 21
were directed to compositions containing polymerized acrylate, or
methacrylate monomers. Finally, we found that the functional limitation at the
conclusion of both claims 15 and 21 had been expressly defined by Ruus as
nothing more than an encapsulated “pressure sensitive adhesive.” As for
claim 19, directed to polyurea walls we rely upon and adopt the position of
the examiner in the Answer at page 11.
Accordingly, we sustain the rejection of claims 15 through 24 over
Sawai on the grounds of anticipation and obviousness respectively.
As to those rejections relying on the secondary reference to Ozono, we
rely on Sawai alone. In the discussion of each of the above rejections over Sawai, the
dispositive issue is whether appellant has had a fair opportunity to react to the thrust of
the rejection. In re Kronig, 539 F.2d 1300, 1302-03, 190 USPQ 425, 426-27
(CCPA 1976). Limiting the discussion to the evidence contained in Sawai alone does
Appeal No. 1996-1942 13
Application No. 07/977,834
not constitute a new ground of rejection. See Kronig, 539 F.2d at 1303, 190 USPQ at
427; In re Bush, 296 F.2d 491, 496, 131 USPQ 263, 266-67 (CCPA 1961).
The Rejections over Ruus
Ruus disclose a process of encapsulation. See column 1, lines 10-11. The
encapsulated product has an insoluble shell formed by interfacial polymerization. See
column 2, lines 25-26 and 45-59. We previously found that Ruus specifically disclosed
that, “[t]he encapsulation technique can also be used in the preparation of pressure
sensitive adhesives for application to placards, envelopes, etc.[,] where it is necessary that
the surface remain non-adhesive until adherence is desired.” See Ruus, column 1, lines
54-57. Included among the materials to be encapsulated are activated monomers, i.e.,
monomers in the presence of a catalyst. See column 4, lines 28-30. The specific
monomer exemplified is methyl methacrylate. See Examples 6 and 11. In each of said
examples a microcapsule is formed from methyl methacrylate and azodiisobutyronitrile, a
free radical initiator. A thin sample of microcapsules is subjected to UV radiation to
convert it to a solid polymer. Id. Ruus further discloses that, “it may be desirable that
the internal phase have a particular state during encapsulation, but is converted to a
second state after completion of the encapsulation process, i.e., a liquid monomer
converted to a polymer.” See column 8, lines 60-65.
Applying the above findings to the independent process claim, we find that there
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Application No. 07/977,834
is no heating step disclosed in Ruus as required by the subject matter of claim 1 directed
to a method of producing a microencapsulated adhesive. In addition, as we found supra,
on the record before us, there is no evidence to support the examiner’s position that the
UV polymerization of the methyl methacrylate is the equivalent of heating as required by
the claimed subject matter.
As for the rejection of Russ with Ozono, the combination of the references fails
for the same reasons supra that Sawai could not be combined with Ozono. The essential
teaching of Ozono is directed to the partial polymerization of monomers such that they
form the wall of the capsule with the inner portion remaining unpolymerized. In this
manner they act as a replacement for the walls of Sawai and Ruus both formed by
interfacial polymerization. Accordingly, it is not seen why one of ordinary skill in the art
would have used the monomer system of Ozono in the method of Ruus.
As for the combination of Ruus with Wolinski, directed to claim 9, the latter
reference is relied upon in the manner stated supra. Accordingly, it does not remedy the
deficiencies of the combination of Ruus in view of Ozono.
Applying our findings to independent claim 21 directed to a product by process,
it is sufficient to establish a prima facie case of obviousness that Russ discloses a
microencapsulated monomer and initiator having walls of a polyamide wherein the
polymerization may occur within the microcapsules subsequent to their formation.
Appeal No. 1996-1942 15
Application No. 07/977,834
Furthermore, it is clear from the teachings of Ruus that the microencapsulated adhesives
function as in the manner required by the claimed subject matter. They are non-tacky
until the application of external force. Accordingly, we find that the teachings of Ruus
are sufficient to establish a prima facie case of obviousness with respect to independent
claim 21.
As to the rejection of claim 25, wherein the examiner relies upon a reference to
Dahm for its teaching of polyurea containing walls, we adopt the position of the examiner
as stated in the Answer on pages 9 and 10.
Finally, as to those rejections relying on the secondary reference to
Ozono, we rely on Ruus alone. In the discussion of each of the above rejections over
Ruus, the dispositive issue is whether appellant has had a fair opportunity to react to the
thrust of the rejection. Kronig, 539 F.2d at 1302-03, 190 USPQ at 426-27. Limiting
the discussion to the evidence contained in Ruus alone does not constitute a new ground
of rejection. See Kronig, 539 F.2d at 1303, 190 USPQ at 427; Bush, supra.
Decision
The rejection of claims 1 through 8 and 14 under 35 U.S.C. § 103(a) as being
unpatentable over Sawai in view of Ozono is reversed.
The rejection of claims 21 through 24 under 35 U.S.C. § 103(a) as being
unpatentable over Sawai in view of Ozono is affirmed.
Appeal No. 1996-1942 16
Application No. 07/977,834
The rejection of claim 9 under 35 U.S.C. § 103(a) as being unpatentable over
Sawai in view of Ozono and further in view of Wolinski is reversed.
The rejection of claims 1, 2, 4, 6 through 8, 10, 12, and 14 under 35 U.S.C.
§ 103(a) as being unpatentable over Ruus in view of Ozono is reversed.
The rejection of claims 21 through 26 under 35 U.S.C. § 103(a) as being
unpatentable over Ruus in view of Ozono is affirmed.
The rejection of claim 9 under 35 U.S.C. § 103(a) as being unpatentable over
Ruus in view of Ozono and further in view of Wolinski is reversed.
The rejection of claims 15 through 18 under 35 U.S.C. § 102(b) as being
anticipated by Sawai is affirmed.
The rejection of claim 20 under 35 U.S.C. § 103(a) as being unpatentable over
Sawai is affirmed.
The rejection of claim 19 under 35 U.S.C. § 103(a) as being unpatentable over
Sawai in view of Ruus is affirmed.
The rejection of claims 3, 5, 11 and 13 under 35 U.S.C. § 103(a) as being
unpatentable over Ruus in view of Ozono and further in view of Dahm is reversed.
The rejection of claim 25 under 35 U.S.C. § 103(a) as being unpatentable over
Ruus in view of Dahm is affirmed.
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The decision of the examiner is affirmed-in-part.
No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a).
AFFIRMED-IN-PART
CHARLES F. WARREN )
Administrative Patent Judge )
)
)
)
)
) BOARD OF PATENT
THOMAS A. WALTZ ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
)
PAUL LIEBERMAN )
Administrative Patent Judge
)
PL:hh
Appeal No. 1996-1942 19
Application No. 07/977,834
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