Ex Parte Czerwonatis et al

Patent Trial and Appeal Board

Feb 28, 2017

13203903 (P.T.A.B. Feb. 28, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/203,903 10/12/2011 Franziska Czerwonatis 101769-622 WCG 3278
27386 7590 03/01/2017
GERSTENZANG, WILLIAM C.
NORRIS MCLAUGHLIN & MARCUS, PA
875 THIRD AVE, 8TH FLOOR
NEW YORK, NY 10022
EXAMINER
RIOJA, MELISSA A
ART UNIT PAPER NUMBER
1768
MAIL DATE DELIVERY MODE
03/01/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANZISKA CZERWONATIS, STEPHEN SCHONBOM,
AXEL BURMEISTER, and VOLKER LASS1
Appeal 2015-000716
Application 13/203,903
Technology Center 1700
Before CHUNG K. PAK, TERRY J. OWENS, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134(a) from the
Examiner’s decision2 finally rejecting claims 1-13, which are all of the claims
pending in the above-identified application. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
1 Appellants identify the real party in interest as “tesa SE”. Appeal Brief filed June
30, 2014 (“App. Br.”) at 1.
2 Final Action entered December 5, 2013 (“Final Act.”) at 6-11; Advisory Action
entered April 15, 2014 (“Adv. Act.”) at 2—4; and the Examiner’s Answer entered
September 9, 2014 (“Ans.”) at 3-9.
Appeal 2015-000716
Application 13/203,903
STATEMENT OF THE CASE
The subject matter of the claims on appeal relates to “mass systems foamed
with microballoons[.]” Spec. 1,11. 9-10; claim 1. “The mass system is with
particular preference a polymeric system of a kind which can be used as an
adhesive, especially advantageously as a self-adhesive or pressure-sensitive
adhesive.” Spec. 7,11. 19-21. It may be selected from the group of thermoplastic
elastomers constituting natural rubbers, synthetic rubber, including block
copolymers, polyacrylates, polyurethanes, silicone rubbers, polyolefins and blends
thereof, or others. Spec. 7,1. 19-8,1. 4. “Microballoons are elastic hollow spheres
which have a thermoplastic polymer casing. These spheres are filled with low-
boiling liquids or with liquefied gas.” Spec. 6,11. 25-26.
Details of the appealed subject matter are recited in representative claim 1,
which is reproduced below from the Claims Appendix of the Appeal Brief:
1. A method for producing a foamed mass system comprising
thermally sensitive substances, in which a mass system having
unexpanded microballoons mixed therein is foamed in a first step at a
first temperature, and the thermally sensitive substances are mixed
into the mass system in a following step at a second temperature,
which is lower than the first temperature.
App. Br. 14, Claims Appendix (emphasis added).
The Examiner maintains, and Appellants seek review of, the
following grounds of rejection:
1. Claims 1-5, 8, 9, 12, and 13 under 35 U.S.C. § 103(a) as unpatentable
over the combined disclosures of Fischer (US 2004/0241417 A1 published
Dec. 2, 2004) and Heese (US 5,496,865 issued Mar. 5, 1996); and
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Application 13/203,903
2. Claims 6, 7, 10, and 1 lunder 35 U.S.C. § 103(a) as unpatentable over
the combined disclosures of Fischer, Heese, and Zollner (US 2010/0104864 A1
published Apr. 29, 2010). Final Act. 2-5; Ans. 2-5; App. Br. 3.
DISCUSSION
Upon consideration of the evidence on this appeal record in light of the
respective positions advanced by the Examiner and Appellants, we determine that
a preponderance of the evidence supports the Examiner’s determination that the
applied prior art would have rendered the subject matter recited in claims 1-13
obvious to one of ordinary skill in the art within the meaning of 35 U.S.C.
§ 103(a). Accordingly, we sustain the Examiner’s § 103(a) rejections of the above
claims for the reasons set forth in the Final Action, Advisory Action, and the
Answer. We add the following primarily for emphasis and completeness.
Claims 1-5, 8, 9, 12, and 13
Initially, we note that Appellants argue claims 1-5, 8, 9, 12, and 13 together
as a group and do not separately argue them on this appeal. App. Br. 3-11.
Therefore, for purposes of this appeal, we select claim 1 as representative and
decide the propriety of this rejection based on claim 1 alone pursuant to 37 C.F.R.
§ 41.37(c)(l)(iv) (2012).
Claim 1 is directed to a method of producing a foamed mass system
comprising thermally sensitive substances, which comprises foaming a mass
system with unexpanded microballoons mixed therein at a first temperature and
then mixing the thermally sensitive substances into the resulting foamed mass
system at a second temperature which is lower than the first temperature. As
indicated supra, the mass system includes a polymeric system and the
microballoons include elastic thermoplastic hollow spheres that encase a low-
boiling liquid or liquefied gas. The thermally sensitive substances are described as
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Application 13/203,903
including “crosslinker substances and/or crosslinker accelerator substances that are
to be used for thermal crosslinking of the mass system” and “colorants or
fragrances, especially those which at elevated temperatures undergo decomposition
or otherwise lose their coloring or ffagrancing properties, respectively” Spec. 14,
11. 11-14 and 22-25. Claim 1, by virtue of using the transition term “comprising,”
does not preclude the addition of or the presence of various additives in the mass
system, which are not specifically recited in claim 1. In re Baxter, 656 F.2d 679,
686—87 (CCPA 1981) (“As long as one of the monomers in the reaction is
[claimed] propylene, any other monomer may be present, because the term
‘comprises’ permits the inclusion of other steps, elements, or materials.”)
Here, Appellants do not dispute the Examiner’s finding that Fischer teaches
melt-mixing a mass system (polymer) and unexpanded microballoons (Fischer’s
unexpanded microspheres) to form a molten polymer having the unexpanded
microballoons mixed therein and then extruding the molten polymer having the
unexpanded microballoons mixed therein at a temperature at or above which the
microballoons are expanded to produce a foam product having expanded
microballoons. Compare Ans. 2-3, with App. Br. 3-11 and Reply Brief filed
August 16, 2014 (“Reply Br.”) at 1-2; see also Fischer || 68-69. Nor do
Appellants dispute the Examiner’s finding that Heese teaches melting and
extruding polymers in the presence of a foaming agent to produce a foam product
(porous carrier) and then adding and mixing fragrances corresponding to the
thermally sensitive substances recited in claim 1 with the porous or foam products
at a temperature below the melting point of the polymers but the above the melting
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point of the fragrances. Compare Ans. 3, with App. Br. 3-11 and Reply Br. 1-2;
see also Heese col. 2,11. 6-15 and col. 3,11. 1^46.
Rather, Appellants contend that Fischer does not teach further mixing the
foam product having expanded microballoons with the thermally sensitive
substances at a temperature lower than the foaming temperature. See, e.g., App.
Br. 9. Appellants also contend that Heese teaches using chemical foaming agents,
rather than microballoons, in producing a foam product and does not deal with “the
specific problem of the present invention[.]” See, e.g., App. Br. 10. Appellants
then contend that “one cannot simply put together Fischer and Heese and conclude
that this would [not] lead the skilled person to Appellants’ invention.” See, e.g.,
App. Br. 10-11.
Thus, the dispositive question is: Would one of ordinary skill in the art have
had an apparent reason or suggestion to employ the microballoons taught by
Fischer as the foaming agent of Heese’s process, with a reasonable expectation of
successfully forming a foam product that is to be mixed with the fragrances (the
recited thermally sensitive substances) at a temperature lower than the melting and
foaming temperature? On this record, we answer this question in the affirmative.
As indicated supra, Heese discloses melting and extruding polymers in the
presence of a foaming agent to produce a porous or foam product at a melting and
foaming temperature and then adding and mixing fragrances corresponding to the
thermally sensitive substances recited in claim 1 with the porous or foam products
at a temperature below the melting point of the polymers, but the above the melting
point of the fragrances. See also Heese col. 2,11. 6-15 and col. 3,11. 1-46. Heese
discloses a number of advantages associated with its process, including “reactive
additives produced ... [that] can be transferred in a material-saving manner in the
form of a charged master batch.” See Heese col. 1,1. 65-col. 2,1.15. Although
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Heese does not specifically mention its foaming agent as expandable
microballoons as argued by Appellants, Fischer teaches melting and extruding a
polymer in the presence of a foaming agent, more particularly expandable
microspheres (the recited microballoons), to form a foam product containing
expandable microspheres (microballoons). See Fischer || 11-15 and 68-69. In
the words of Fischer flflf 68-69) (emphasis added):
[0068].... The purpose of the melt-mixing step is to prepare
and expandable extruable composition in which the thermally
conductive filler, microspheres [corresponding to the recited
microballoons,] and other additives, if present, are distributed
throughout the molten polymer. Typically, the melt-mix operation
uses one conveying block downstream from entrance 313 to obtain
adequate mixing, although kneading elements may be used as well.
The temperature, pressure, shear rate, and mixing time employed
during melt-mixing are selected to prepare an expandable extrudable
composition without causing the microspheres to expand or break....
[0069] Following melt-mixing, the expandable extrudable
composition is metered into extrusion die 314.. .through transfer
tubing 318 using a gear pump 316. The temperature within multi­
layer die 314 is maintained at substantially the same temperature as
the temperature within transfer tubing 318. The temperature within
die 314 is at or above the temperature required to cause expansion of
the expandable microspheres [corresponding to the recited expandable
microballoons]. While extrusion die 314 is shown in FIG. 4 as a
multi-layer die, it is understood that die 314 can be a single layer
die.... Those skilled in the art will appreciate that chemical blowing
agents and the like are also useful in the manufacture of foams
according to the invention, either in place of the expandable
microspheres or in combination with the microspheres.
Stated differently, Fischer teaches various foaming agents, including
expandable microspheres (microballoons), as interchangeable in forming a
foam product. Id.
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Consequently, we find no reversible error in the Examiner’s determination
that one of ordinary skill in the art would have had an apparent reason or
suggestion to employ the expandable microspheres (microballoons) taught by
Fischer as the foaming agent in Heese’s process during the melting and extrusion
of polymers, with a reasonable expectation of successfully forming a foam product
that is to be mixed with the fragrances (the recited thermally sensitive substances)
at a temperature lower than the melting and foaming temperature. KSR Int'l Co. v.
Teleflex Inc., 550 U.S. 398, 416 (2007) (“[W]hen a patent ‘simply arranges old
elements with each performing the same function it had been known to perform’
and yields no more than one would expect from such an arrangement, the
combination is obvious.” (quoting Sakraida v. AgPro, Inc., 425 U.S. 273, 282
(1976))); In reFout, 675 F.2d 297, 301 (CCPA 1982) (“Express suggestion to
substitute one equivalent for another need not be present to render such
substitution obvious.”); In reMayne, 104 F.3d 1339, 1340 (Fed. Cir. 1997)
(“Because the applicants merely substituted one element known in the art for a
known equivalent, this court affirms [the rejection for obviousness].”); In re
Beattie, 91A F.2d 1309, 1312 (Fed. Cir. 1992) (“As long as some [reason,]
motivation or suggestion to combine the references is provided by the prior art
taken as a whole, the law does not require that the reference be combined for the
reasons contemplated by the inventor.”)
Appellants contend that:
Surprisingly and unexpectedly, the microballoon-foamed mass system
can withstand processing after cooling without any significant
decrease in the degree of foaming (page 5, line 34-page 6, line 2).
Those skilled in the art would have expected that when the foam mass
system is cooled and the temperature sensitive substances are mixed
in, “destructive beating” of the cooled foam would have occurred and
that a significant decrease in the degree of foaming would have
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Application 13/203,903
occurred (page 5, lines 25-32). Surprisingly and unexpected this does
not happen!
See, e.g. App. Br. 4 and 6. However, as explained by the Examiner at page 9 and
10 of the Answer, Appellants’ mere arguments in the Brief or conclusory
statements in the Specification cannot take the place of objective evidence. See In
re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) In re Lindner, 457 F.2d 506, 508
(CCPA 1972). As stated by our reviewing court, unexpected or surprising results
is a question of fact. Mayne, 104 F.3d at 1343. However, Appellants proffer no
factual evidence to support their conclusion that the invention imparts unexpected
results.
In addition, nothing in the applied prior art indicates that the microballoon-
foamed mass system cannot withstand further processing after cooling or that
further processing of the cooled microballoon-foamed mass system causes a
significant decrease in the degree of foaming. As indicated supra, Heese teaches
further processing the cooled foam product produced by using a suitable foaming
agent, inclusive of the expandable microspheres taught by Fischer, with fragrances
(the recited temperature sensitive substance) at a temperature lower the melting
temperature of the foamed mass system. See also Heese col. 2,11. 6-15 and col. 3,
11. 1^46. Yet, contrary to Appellants’ argument, nowhere does Heese indicate that
its cooled foam product (the pourable porous carrier material) is subjected to
destructive beating or a significant decrease in the degree of foaming. See, e.g.,
Heese col. 2,11. 6-15 and col. 3,11. 1^46. Rather, Heese teaches that “[t]he
absorption capacity of the carrier material [(foam product)] is generally improved
by a higher [mixing] temperature, for which reason the mixing temperature Tm for
the additives preferably lies in the range of 30° to 140° C. in particular between 40°
and 90° C.” See Heese col. 3,11. 28-33. Further, Fischer teaches that it is well
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within the ambit of one of ordinary skill in the art to select the temperature,
pressure, shear rate, and mixing time employed to avoid the expansion or breakage
of microspheres even in a melt-mixing step. Thus, the applied prior art as whole
would have suggested further processing of a cooled foam product having
expanded microspheres (microballoons) with fragrances (the recited thermally
sensitive substances) at appropriate or optimum conditions, with a reasonable
expectation of successfully improving the absorption capacity of the foam product,
without a significant decrease in the degree of foaming or destructive beating.
Accordingly, we determine that the Examiner does not err in concluding that
a preponderance of the evidence leans heavily in favor of the obviousness of the
subject matter recited in claims 1-5, 8, 9, 12, and 13 under 35 U.S.C. § 103(a).
Claims 6, 7, 10, and 11
Appellants contend that “Zollner et al does not remedy the deficiencies of
Fischer et al. and Heese et al. This argument is moot, as the alleged deficiencies
have been addressed above.” App. Br. 11. Thus, based on the same reasoning
discussed above, we determine that the Examiner does not err in concluding that a
preponderance of the evidence leans heavily in favor of the obviousness of the
subject matter recited in claims 6, 7, 10, and 11 under 35 U.S.C. § 103(a) as well.
ORDER
Upon consideration of the record, and for the reasons given, it is
ORDERED that the decision of the Examiner to reject claims 1-13 under 35
U.S.C. § 103(a) is AFFIRMED; and
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FURTHER ORDERED that 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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