Ex Parte Everaerts et al

Patent Trial and Appeal Board

Feb 15, 2017

12538948 (P.T.A.B. Feb. 15, 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.
12/538,948 08/11/2009 Albert I. Everaerts 63744US006 8342
32692 7590 02/17/2017
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
RUMMEL, IAN A
ART UNIT PAPER NUMBER
1785
NOTIFICATION DATE DELIVERY MODE
02/17/2017 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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALBERT I. EVERAERTS and JIANHUI XIA
Appeal 2015-004521
Application 12/538,948
Technology Center 1700
Before ROMULO H. DELMENDO, KAREN M. HASTINGS, and
N. WHITNEY WILSON, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2015-004521
Application 12/538,948
The Applicants (hereinafter the “Appellants”)1 appeal under 35 U.S.C.
§ 134(a) from a final decision of the Primary Examiner to reject claims
1—13.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
BACKGROUND
The subject matter on appeal relates to an article comprising a
specified adhesive in contact with a specified corrosion sensitive layer
(Specification, hereinafter “Spec.,” 1,11. 26—28). According to the
Appellants, the articles may be integrated into electronic devices such as
liquid crystal displays, capacitive type touch panels, cell phones, hand held
devices, and laptop computers {id. at 3,11. 22—25).
Representative claim 1 is reproduced from page 11 of the Appeal
Brief (Claims Appendix; emphases added), as follows:
1. An article comprising an adhesive having an acid
number of less than about 5 and selected from the group
consisting of polyurea, polyamide, polyurethane, polyester and
combinations thereof in contact with a corrosion sensitive layer
selected from the group of metal and metal alloys, wherein
when the article is conditioned for about 21 days at about
60°C and 90% relative humidity, the corrosion sensitive layer
exhibits a change from its initial electrical resistance value of
20% or less, and wherein the adhesive comprises a viscoelastic
adhesive.
1 The Appellants state that the real parties in interest are: 3M Company and
3M Innovative Properties Company (Appeal Brief filed September 24, 2014,
hereinafter “Appeal Br.,” 2).
2 Appeal Br. 2—9; Reply Brief filed March 4, 2015, hereinafter “Reply Br.,”
2—5; Final Office Action (notice delivered electronically on April 11, 2014),
hereinafter “Final Act.,” 2, which refers to Non-Final Office Action (notice
delivered electronically on September 16, 2013), hereinafter “Non-Final
Act.”; Examiner’s Answer (notice delivered electronically on January 16,
2015), hereinafter “Ans.,” 2—8.
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Appeal 2015-004521
Application 12/538,948
REJECTIONS ON APPEAL
The Examiner rejected the claims as follows:
I. Claims 1—5, 7—9, and 12 under pre-AIA 35 U.S.C. § 102(b)
(pre-AIA) as anticipated by Fujii et al.3 (hereinafter “Fujii”), as
evidenced by either Miyaki et al.4 (hereinafter “Miyaki”) or
Yasutaka et al.5 (hereinafter “Yasutaka”);
II. Claims 1—13 under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Aufderheide et al. (hereinafter
“Aufderheide”) in view of Fujii; and
III. Claims 1—13 under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Alden et al.6 (hereinafter “Alden”) in
view of Aufderheide.
(Ans. 2—8; Final Act. 2; Non-Final Act. 2—11.)
DISCUSSION
Rejections I & II
A dispositive issue common to both Rejections I and II is whether the
Examiner correctly found that Fujii’s adhesive is “a viscoelastic adhesive”
as required by claim 1, the sole independent claim on appeal (compare
Appeal Br. 3—5 with Non-Final Act. 3 and Ans. 2-A). For the reasons given
by the Appellants and below, the Examiner’s finding was reversibly
erroneous.
We start with claim construction. When the Specification provides a
definition for a term, we must give the term that meaning. In re Morris, 111
3 US 2002/0099138 Al, published July 25, 2002.
4 US 2006/0050188 Al, published March 9, 2006.
5 US 2004/0256148 Al, published December 23, 2004.
6 US 2007/0074316 Al, published March 29, 2007.
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Application 12/538,948
F.3d 1048, 1054 (Fed. Cir. 1997) (“it would be unreasonable for the PTO to
ignore any interpretive guidance afforded by the applicant’s written
description”).
Consistent with the Appellants’ position (Appeal Br. 3^4; Reply Br.
2—3), the definition in the Specification regarding the term “adhesive” is that
it “generally means a viscoelastic material having viscous and elastic
components such that while the adhesive displays some level of resiliency
under compressive stress, it is generally not a spring-like material, i.e., it is
not an elastic solid” (Spec. 2., 11. 11—13) (emphasis added). The Examiner
failed to demonstrate that Fujii’s adhesive would be “a viscoelastic
adhesive”—i.e., an adhesive that displays some level of resiliency—as that
term would be understood by those skilled in the relevant art. To the
contrary, Fujii teaches that a two-part adhesive composition is used to bond
transparent substrates of an optical disk (1 1). Although Fujii discloses a
urethane acrylate resin (1 17), the resin must be cured to such an extent that
the problem of warping and deformation of the disk substrates is avoided
(121) and “the disk substrates do not relatively move” (135; see also 161).
Under these circumstances, we discern no factual basis upon which to
believe that Fujii’s adhesive would be a “viscoelastic adhesive” as required
by the claims.
The Examiner’s reliance on R. S. Lakes, “Viscoelastic Measurement
Techniques,” 75 Review of Scientific Instruments 797—810 (2004)
(hereinafter “Lakes”) is misplaced. Lakes does state that “[a]ll materials
exhibit viscoelastic response” (797). But that statement in Lakes does not
establish that all materials, including the set adhesive disclosed in Fujii, can
reasonably considered a “viscoelastic adhesive” as recited in claim 1.
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Application 12/538,948
Indeed, as the Appellants point out (Reply Br. 2), Lakes qualifies the
statement by disclosing that “elasticity or spring-like behavior does not exist
in real materials but is an approximate description of materials for which the
viscoelastic effects are small enough to ignore” (id.).
The Examiner appears to have relied on Miyaki (| 32) and Yasutaka
(1 65) as evidence that Fujii’s cured resin could be a viscoelastic material
(Non-Final Act. 3). But neither Miyaki nor Yasutaka establishes that the
adhesive with the degree of crosslinking or curing required by Fujii would
be a “viscoelastic adhesive” as required by claim 1.
For these reasons, we cannot uphold Rejections I and II.
Rejection III
The Appellants argue claims 1—13 together (Appeal Br. 7—9).
Therefore, we confine our discussion to claim 1, which we select as
representative pursuant to 37 C.F.R. § 41.37(c)(l)(iv). As provided by this
rule, claims 2—13 stand or fall with claim 1.
The Examiner found that Alden describes every limitation recited in
claim 1 except “Alden does not teach that the adhesive has an acid number
of less than about 5, or that the resistance of the conductive layer changes by
less than 20% when exposed to 90% humidity for about 21 days at about 60
degrees Celsius” (Non-Final Act. 6). To account for these differences, the
Examiner relied on Aufderheide’s teaching that “it is desirable for such
adhesives to be free of acid so as to prevent the adhesive from adversely
reacting] with conductive substrates” (id. at 6—7) (internal citation omitted).
Based on these findings, the Examiner concluded:
It would have been obvious to one of ordinary skill in the art at
the time the invention was made to make the adhesive layers of
Alden with adhesives that lacked acid content, as doing so
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Application 12/538,948
would prevent the adhesives from adversely reacting with the
conductive layers. It would also have been obvious to one of
ordinary skill in the art at the time the invention was made to
make the adhesive such that the resistance of the conductive
layer changed by less than 20% when exposed to 90% humidity
for about 21 days at about 60 degrees Celsius, as one of
ordinary skill in the art would understand the need to prevent
the adhesive from adversely reacting with the conductive layer,
as taught by Alden (| 0110).
(id. at 7).
The Appellants contend that “Aufderheide teaches the use of silicone
materials and there is no suggestion, teaching or motivation to use other
materials such as polyurethane, polyester or polyamide materials” (Appeal
Br. 7). The Appellants also argue that Alden’s conductive layer is not
sensitive to corrosion because that conductive layer includes metal
nanowires embedded in a matrix that protects the metal nanowires from
adverse environmental factors such as corrosion (id. at 7—8). In addition, the
Appellants argue that Alden places no limitation on adhesive and that “[t]he
lack of specificity (without limitation, permits there to be for example acid
groups on the adhesive) and the inclusion of chlorinated materials which are
known to cause corrosion in exposed metal surfaces” (id. at 8). According
to the Appellants, Alden discloses maleic acid resins, which have acid
numbers of at least 16 or greater, and thus indicates that the selection of the
adhesive to avoid corrosion of the conducting layer is not a concern (id. at
8-9).
The Appellants’ arguments fail to identify reversible error in the
Examiners’ obviousness analysis. In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011).
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Application 12/538,948
As explained by the Examiner (Non-Final Act. 6; Ans. 8), the
Examiner has relied on Alden—not Aufderheide—to account for claim 1 ’s
adhesive limitations pertaining to the resin’s chemical identity (“selected
from the group consisting of polyurea, polyamide, polyurethane, polyester
and combinations thereof’). Alden teaches various resins such as
polyamides, polyester resins, and polyurethane resins, which bond two
layers “without affecting the physical, electrical or optical properties of
either layer” (| 110). The Examiner then relied on Aufderheide as evidence
that a person having ordinary skill in the art would have understood that acid
groups on a polymer, although in the context of a silicone resin in
Aufderheide, would detrimentally react with a metal substrate (col. 5,11. 36—
43). Therefore, the Examiner concluded (Non-Final Act 7) that a person
having ordinary skill in the art would have selected Alden’s resins to have a
low acid number as recited in claim 1 to prevent adverse reactions between
the adhesive and the substrate. We find the Examiner’s analysis to be
reasonable and sound. In re Keller, 642 F.2d 413, 425 (CCPA 1981).
As for the argument that Alden’s metal nano wires on the conductive
layer 12 (Figure 11) are not sensitive to corrosion because they are
embedded in matrix 18, Alden teaches plainly that “the nano wires may
protmde from the matrix material to enable access to the conductive
network” and that the matrix “significantly lowers the permeability of
corrosive elements” (| 83). A person having ordinary skill in the art would
have drawn a reasonable inference from this disclosure that the metal
nanowires are not protected completely from corrosion and, therefore, a
person having ordinary skill in the art would have been prompted to select
an adhesive that further enhances protection against corrosion.
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For these reasons, we uphold Rejection III.
SUMMARY
Rejections I and II are reversed. Rejection III is affirmed. Therefore,
the Examiner’s final decision to reject claims 1—13 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)(1).
AFFIRMED
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