Ex Parte ELLRINGMANN et alDownload PDFPatent Trial and Appeal BoardMay 11, 201612560514 (P.T.A.B. May. 11, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/560,514 09/16/2009 27384 7590 05/11/2016 Briscoe, Kurt G, Norris McLaughlin & Marcus, PA 875 Third Avenue, 8th Floor New York, NY 10022 FIRST NAMED INVENTOR Kai ELLRINGMANN 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. 101769-530 KGB 1510 EXAMINER LEE, DANIEL H. ART UNIT PAPER NUMBER 1746 MAILDATE DELIVERY MODE 05/11/2016 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 Exparte KAI ELLRINGMANN, STEFAN WULF, and KRISTIN KERBER1 Appeal2014-009184 Application 12/560,514 Technology Center 1700 Before CHUNG K. PAK, JEFFREY T. SMITH, and WESLEY B. DERRICK, Administrative Patent Judges. DERRICK, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal under 35 U.S.C. § 134(a) from the Examiner's maintained final rejection of claims 1and4-10 under 35 U.S.C. § 103 (a) as obvious over Ellringmann2 in view of Ikeda. 3 We have jurisdiction pursuant to 35 U.S.C. § 6(b ). We AFFIRM. 1 According to Appellants, the Real Party in Interest is tesa SE. App. Br. 1. 2 Ellringmann et al. (US 2008/0153951 Al, published June 26, 2008). 3 Ikeda et al. (US 2005/0143552 Al, published June 30, 2005). Appeal2014-009184 Application 12/560,514 CLAIMED SUBJECT MATTER Appellants' claimed invention relates to a repulpable, pressure- sensitive adhesive containing up to 5% by weight orthophosphoric acid [H3P04] and methods relating to this adhesive's preparation and use. Spec. Abstract; 1:9-10; 3:16-20; Claims 1, 6, 10. Claim 1 is reproduced below: 1. Repulpable pressure-sensitive adhesive comprising: (a) copolymers of (meth)acrylic acid with esters of (meth)acrylic acid, wherein the amount of (meth)acrylic acid in said copolymers amounts to more than 20% by weight, based on the weight of the pressure-sensitive adhesive; and (b) orthophosphoric acid in an amount of up to 5% by weight, based on a pure phosphoric acid content of the pressure-sensitive adhesive. DISCUSSION Having reviewed the Examiner's rejection in light of arguments advanced by Appellants in their Reply and Appeal Briefs, we are not persuaded that the Examiner erred reversibly in concluding that claims 1 and 4-10 are unpatentable for obviousness. We add the following for emphasis.4 Appellants argue claims 1 and 4-10 as a group, and we select claim 1 as representative, to which we limit our discussion. App. Br. 3-10. Appellants do not dispute the Examiner's finding that Ellringmann discloses a repulpable, pressure-sensitive adhesive comprising copolymersi 4 Rather than reiterate all arguments of Appellants and the Examiner, we refer to the Final Office Action (mailed October 25, 2013), the Appeal Brief (filed June 26, 2014), the Examiner's Answer (mailed July 30, 2014), and the Reply Brief (filed August 14, 2014). 2 Appeal2014-009184 Application 12/560,514 of acrylic acid and/or methacrylic acid, with esters of (meth)acrylic acid, which correspond to the copolymers recited in claim 1. Compare Ans. 2 with App. Br. 3-10. Nor do Appellants dispute the Examiner's de facto finding that Ellringmann discloses the amount of acrylic acid in the copolymers that implies the amount of (meth)acrylic acid in the copolymers recited in claim 1. Compare Ans. 2 with App. Br. 3-10. The Examiner finds that Ellringmann further discloses including additives, including phosphates, in the adhesive, but does not expressly disclose the orthophosphoric acid additives recited in claim 1. Ans. 2 (citing Ellringmann ii 17). To remedy this deficiency in Ellringmann, the Examiner relies on Ikeda' s disclosure of an adhesive to which 0.1 to 10 % by mass of orthophosphoric acid is added to enhance the acid resistance of the adhesive. Ans. 2-3 (citing Ikeda ii 33). The Examiner concludes that it would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to add orthophosphoric acid in the amounts taught by Ikeda to Ellringmann's repulpable, pressure-sensitive to enhance the acid resistance of the adhesive. Ans. 3. Appellants do not contend that the Examiner fails to establish a prima facie case of obviousness of the claimed subject matter (App. Br., generally), but instead contend that unexpected results in data presented in the Declaration of Kai Ellringmann (filed October 13, 2013, hereafter "Declaration") rebut the Examiner's prima facie case (App. Br. 5-10). Appellants do not, however, meet the burden of demonstrating that the claimed invention imparts unexpected results that are reasonably commensurate with the scope of protection sought by the claims on appeal 3 Appeal2014-009184 Application 12/560,514 necessary to rebut the prima facie case. In re Klosak, 455 F.2d 1077, 1080 (CCP A 1972) ("the burden of showing unexpected results rests on he who asserts them"); In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005) ("Even assuming that the results were unexpected, Harris needed to show results covering the scope of the claimed range. Alternatively Harris needed to narrow the claims."); In re Greenfield, 571F.2d1185, 1189 (CCPA 1978) ("Establishing that one (or a small number of) species gives unexpected results is inadequate proof, for 'it is the view of this court that objective evidence of non-obviousness must be commensurate in scope with the claims which the evidence is offered to support."') (quoting In re Tiffin, 448 F.2d 791, 792 (CCPA 1971). The Declaration sets forth corrections to experiments included in the Specification and additional experiments. The results of the experiments set forth in the Declaration include the levels of tack exhibited by various adhesive compositions that had been laminated to paper containing calcium carbonate, which were determined after the specimens were conditioned for 3 days (instantaneous measurement), and after they were stored for 4 weeks (4-week measurement). Declaration iii! 8-11, 14, 20, Tables 1-2; Spec. 12, 11. 9-20. 5 The experiments were conducted with three "base" adhesive compositions that did not contain an additive, and additional compositions that contained the base adhesive and one of three additives. Declaration iii! 8-11, 14, Table 1. The base adhesive compositions are described in 5 Appellants' Specification describes the experimental procedures used to generate the data presented in the Ellringmann Declaration. 4 Appeal2014-009184 Application 12/560,514 Examples 1, 5, and 9 of Appellants' Specification, which indicate that the adhesive of Example 1 contained acrylic acid, butyl acrylate, and numerous additional components; and the adhesives of Examples 5 and 9 both contained acrylic acid, 2-ethylhexyl acrylate, and numerous other components, but the level of acrylic acid and 2-ethylhexyl acrylate in the two adhesives of Examples 5 and 9 differed. Spec. 8-11. Experiments as to the use of three different additives; diammonium hydrogen phosphate ("AP"), D 11 (a commercially available preparation of sodium polyphosphate and alkylphosphonate; Spec. 9), and orthophosphoric acid ("PA"), are set forth in Specification, and set forth with corrections in the Declaration. Table 1 on page 4 of the Declaration shows that, unlike the specimens containing the diammonium hydrogen phosphate (AP) and D 11 additives, the three specimens containing orthophosphoric acid (PA) exhibited tack values in the instantaneous measurement that were comparable to the base adhesive compositions that did not contain any one of these additives, and unlike the base adhesive compositions, the specimens containing orthophosphoric acid (PA) essentially maintained that tack level for 4 weeks. The Declaration states that these results are unexpected. Dec. iJ 17. Table 2 on pages 5-6 of the Declaration describes additional experiments-not included in the Specification-in which the level of tack exhibited by the base adhesive of Example 9 alone, or with three different amounts (2%, 3%, 5%, and 7%) of each of the Dl 1 and orthophosphoric acid (PA) additives, was determined instantaneously and after 4 weeks, as described above. Similar to the results presented in Table 1, the results in Table 2 indicates that the four specimens containing orthophosphoric acid 5 Appeal2014-009184 Application 12/560,514 exhibited tack values in the instantaneous measurement that were comparable to the base adhesive compositions, and that these specimens maintained that tack level for 4 weeks. The Declaration states that these results were unexpected. Dec. iJ 21. In sum, the Declaration describes results of experiments in which the levels of tack exhibited by three (3) base adhesive compositions (Examples 1, 5, and 9) combined with orthophosphoric acid were determined. Two of the base adhesive compositions (Examples 5 and 9) contained the same copolymer building blocks (acrylic acid and 2-ethylhexyl acrylate), although in different amounts. For two of the base adhesive compositions (Examples 1 and 5), only one amount of orthophosphoric acid was tested (Examples 4 and 8, respectively). Declaration Table 1. For the other (Example 9), a limited range of orthophosphoric acid was used (Examples 12, 14, 16, 18, and 20). Declaration Tables 1-2. In contrast to this limited experimental data, claim 1 broadly recites a repulpable, pressure-sensitive adhesive that comprises any copolymer of (meth)acrylic acid and an ester of (meth)acrylic acid, without excluding the presence of other monomers. In addition, claim 1 requires the amount of (meth)acrylic acid in the copolymers to be any amount more than 20 % by weight, based on the weight of the pressure-sensitive adhesive, and does not specify any particular amount of the copolymers in the adhesive. Further, in regard to the amount of orthophosphoric acid required, the recitation of "up to" 5 % orthophosphoric acid in claim 1 includes zero to 5% orthophosphoric acid, and claim 1 thus encompasses adhesives that contain no orthophosphoric acid at all. In re Mochel, 470 F.2d 638, 640 6 Appeal2014-009184 Application 12/560,514 (CCPA 1972) (explaining that the term "up to" includes zero as a lower limit.). Moreover, claim 1 does not require the adhesive to include any particular amount of copolymer-as explained above-and is open to including other indeterminate components-due to the comprising transition-further illustrating the limited nature of data compared to what is claimed. The breadth of the repulpable, pressure-sensitive adhesives encompassed by claim 1, accordingly, greatly exceeds the limited number of adhesive compositions relied on to establish unexpected results. Similarly, we note for completeness that independent claim 6, which does not specify the composition of the repulpable pressure-sensitive adhesive used beyond that it includes up to 5% by weight orthophosphoric acid, and independent claim 10, which does not specify the amount of orthophosphoric acid, encompass subject matter greatly exceeding the scope of the limited number of adhesive compositions relied on to establish unexpected results. Appellants do not provide sufficient explanation or evidence why the proffered evidence from the limited number of adhesive compositions in Tables 1 and 2 is reasonably commensurate with the scope of the claims. App. Br. 6-9. Appellants' argument-grounded on In re Kollman-that a narrow range of data can support patentability of a broad claim (App. Br. 6- 9) is without persuasive merit as to the instant claims encompassing a broad range of compositions. In re Kollman, 595 F.2d 48, 55 (CCPA 1979) ("As a starting point, we recognize that even if each of the examples showed the presence of an unexpected result, those examples would not provide an adequate basis for concluding that the great number of compositions recited 7 Appeal2014-009184 Application 12/560,514 in [the] generic claims [] would behave in the same way ... Hence, we affirm the holding of the board with regard to these claims."); see also Greenfield, 571 F. 2d at 1189; Harris, 409 F.3d at 1344. Appellants' contentions that "the data are sufficient to permit one skilled in this art to ... [conclude] that orthophosphoric acid provides an additive benefit across the entire scope of the present claims" (App. Br. 7) and that "[a] person skilled in this art would ... expect that the addition of orthophosphoric acid should confer similar advantages across the full scope of the claims" (App. Br. 9) are insufficient to meet Appellants' burden. See, e.g., In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) ("Attorney's argument ... cannot take the place of evidence."). Appellants accordingly have not met the burden to demonstrate that the claimed invention imparts unexpected results that are reasonably commensurate with the scope of protection sought by the claims on appeal as required to rebut the prima facie case of obviousness. In re Grasselli, 713 F.2d at 731, 743 (Fed. Cir. 1983). Appellants further argue that the Examiner has failed to fully consider the Declaration, including corrected Table 1 (App. Br. 6; Reply Br. 1-3), however, we do not find the weight of evidence supports Appellants' contention where the Examiner maintains he "has fully considered the Declaration" and "has considered the Declaration and the new data" where the "new data" is the corrected data for Table 1 (Ans. 4). Therefore, on this record, we are unpersuaded of reversible error in the Examiner's conclusion that the subject matter of claims 1 and 4-10 would have been obvious over the disclosure of Ellringmann in view of 8 Appeal2014-009184 Application 12/560,514 Ikeda. We accordingly sustain the Examiner's rejection of claim 1 and 4-10 under 35 U.S.C. § 103(a). DECISION The Examiner's rejection of claims 1 and 4-10 under 35 U.S.C. § 103 is AFFIRMED. No time period for taking any subsequent action in connection with this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 ). AFFIRMED 9 Copy with citationCopy as parenthetical citation