Ex Parte Farrell et al

Patent Trials and Appeals Board

May 3, 2016

12470911 - (D) (P.T.A.B. May. 3, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/470,911
31217 7590
Henkel Corporation
One Henkel Way
Rocky Hill, CT 06067
0512212009
05/05/2016
FIRST NAMED INVENTOR
David Farrell
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.
ICC-370/US 4804
EXAMINER
CAI,WENWEN
ART UNIT PAPER NUMBER
1763
NOTIFICATION DATE DELIVERY MODE
05/05/2016 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):
rhpatentmail@henkel.com
trish.russo@henkel.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID FARRELL, CIARAN B. MCARDLE, and
MICHAEL DOHERTY1
Appeal2014-008090
Application 12/470,911
Technology Center 1700
Before TERRY J. OWENS, CHRISTOPHER C. KENNEDY, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL 2
1 Appellants state the real party in interest is Henkel IP & Holding GmbH.
Appeal Brief (App. Br.) 4.
2 In our opinion below, we refer to the Specification filed May 22, 2009
(Spec.), the Final Office Action mailed September 20, 2013 (Final Act.), the
Amendment/Response to Office Action filed December 16, 2013
(Amendment), the Advisory Action mailed December 31, 2013 (Advisory
Act.), the Appeal Brief filed March 17, 2014 (App. Br.), the Examiner's
Answer mailed May 19, 2014 (Ans.), and the Reply Brief filed July 7, 2014
(Reply).
Appeal2014-008090
Application 12/470,911
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1,
3, 5-9, and 23-25. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The claims are directed to a combination comprising a first and
second substrate, one or both of which has a metal, metal oxide, or metal
alloy surface, and a storage stable radically curable composition disposed
between the substrates, resulting in cure of the radically curable composition
and bonding of the first and second substrates together. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A combination comprising
a first substrate having a metal, metal oxide, or metal
alloy surface, and a second substrate,
a storage stable radically curable composition disposed
between the substrates, the radically curable composition
consisting essentially of:
(i) a radically curable component;
(ii) a free radical generating component; and
(iii) at least one metal salt comprising a transition metal
cation and a counterion selected from the group consisting of
naphthenate, ethylhexanoate, benzoate, nitrate, chloride,
acetylacetonate, ClQ4-, BF4-, PF6-, SbF6-, AsF6-, (C6Fs)4B-,
(C6Fs)4Ga-, carborane, triflimide, bis-triflimide, and
combinations thereof and having a standard reduction potential
greater than the standard reduction potential of the surface of
the first substrate,
such that the metal salt is reduced at the surface of the
first substrate, thereby interacting with the free radical
generating component, initiating cure of the radically curable
component of the composition, and bonding the first and
second substrates together.
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Appeal2014-008090
Application 12/470,911
App. Br. 22 (Claims App'x). The claims were amended after Final
Rejection (Amendment 3-7) and the amendments were entered in the
Advisory Action.
The Reference
Siobhan Moane, Declan P. Raftery, Malcolm R. Smyth, Raymond G.
Leonard, Decomposition of peroxides by transition metal ions in anaerobic
adhesive cure chemistry' 19 INT'L J. ADHESION & ADHESIVES 49-57 (1999)
(hereinafter Moane ).
The Rejections
The Examiner's rejection of claims 23 and 24 under 35 U.S.C. § 112,
first paragraph has been withdrawn.
Claims 1, 3, and 5-9 stand rejected under 35 U.S.C §102(b) as being
anticipated by Moane.
Claims 23-25 stand rejected under 35U.S.C§103(a) as being obvious
overMoane.
OPINION
The independent claims are claims 1 and 23-25.
Rejection of claims 1, 3, and 5-9 as anticipated by Moane
Appellants argue the rejection under 35 U.S.C. § 102(b) of claim 1
and its dependent claims 3 and 5-9 as a group. Accordingly, claims 1, 3, and
5-9 stand or fall together.
At the outset, we note that the Examiner determines that claim 1 is a
product-by-process claim, Final Act. 8, and the Appellants do not dispute
that. "If the product in a product-by-process claim is the same as or obvious
from a product of the prior art, the claim is unpatentable even though the
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Application 12/470,911
prior product was made by a different process." Jn re Thorpe, 777 F.2d 695,
697 (Fed. Cir. 1985).
The Examiner finds that Moane teaches an anaerobic adhesive
confined between two closely fitting metal surfaces, the adhesive
composition consisting of monomer, initiator, accelerator, active metal
surface, and inhibitor/stabilizer. Final Act. 4--5 (citing Moane Abstract, 49).
Methacrylate esters are described as the most commonly used monomers in
commercial anaerobic products, and the most commonly applied initiators
include cumene hydroperoxide, t-butyl hydroperoxide, and benzoyl
peroxide. Moane 49. The reference discloses transition metal ions in
general, and copper, iron, zinc, and cadmium ions in particular. Id. at title,
50. Transition metal salts disclosed in Moane include copper naphthenate,
iron nitrate, cobalt nitrate, and copper chloride. Id. at 51.
Claim 1 requires a storage stable radically curable composition
disposed between the substrates consisting essentially of (1) a radically
curable component, (2) a free radical generating component, and (3) at least
one metal salt comprising a transition metal cation and a counterion selected
from the group consisting of various compounds including naphthenate,
nitrate, chloride, and combinations thereof. The radically curable
component is analogous to the monomer of Moane. (See claim 7, which
states "wherein the radically curable component has at least one functional
group selected from the group consisting of ... methacrylates .... " App.
Br. 23 (Claims App'x). The free radical generating component is analogous
to the initiator of Moane. (See claim 6, which states "wherein the radical
initiating component is selected from the group consisting of cumene
hydroperoxide, tert-butyl hydroperoxide, ... , benzoyl peroxide, .... "). Id.
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Application 12/470,911
Appellants do not dispute that Moane teaches what the Examiner says
it does. Rather, Appellants contend that Moane does not disclose all the
claim elements "arranged as in the claim." App. Br. 9-10 (citing Net
MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1370 (Fed. Cir. 2008)). For
example, Appellants argue that Moane fails to disclose a storage stable
radically curable composition disposed between two substrates, and
distinguish their adhesive formulation as stable until contacted with a metal
surface, which functions as the accelerant to cure the claimed composition.
App. Br. 10. Appellants then assert that, unlike Moane, "no acids or
accelerators are introduced into the claimed composition in order for the
composition to cure under radical conditions." Id. Appellants further
attempt to distinguish over Moane by stating that "[t]he addition of metal
ions in Moane' s solution triggers peroxide decomposition in order to
promote polymerization" (App. Br. 12), while "metal ions added to a storage
stable peroxide-containing composition of Appellants' claimed invention"
result in a composition that remains stable, without peroxide decomposition
or polymerization. App. Br. 13 (emphasis in original).
Appellants also contend that Moane "teaches away from a [sic]
storage stable radically curable compositions in the claims" because Moane
states that the experiments discussed in the reference are "not representative
of the adhesive formulation matrix." App. Br. 12 (citing Moane 51-52).
Any merit to Appellants' arguments is nullified by the undisputed fact
that claim 1 is a product-by-process claim. As such, the determination of
patentability is based on the product that results from the process, and not on
the process itself. See In re Thorpe, 777 F .2d at 698 ("If the product in a
product-by-process claims is the same as or obvious from a product of the
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Appeal2014-008090
Application 12/470,911
prior art, the claim is unpatentable even though the prior product was made
by a different process."). Although Appellants draw distinctions between
the process taught in Moane and the process required by claim 1, they fail to
articulate a patentable difference in the products that result from one process
versus the other.
Appellants contend that the Examiner is wrong in finding a metal salt
inherently present in Moane's composition, as they say it would render the
solution used by Moane unstable. App. Br. 12, Reply 2. However, the
Examiner points out that a metal salt is inherently present after the solution
used by Moane is placed between metal substrates, with acids in the solution
releasing transition metal ions in the form of metal salt from the substrate
surface. Ans. 2-3, Final Act. 4--5. Thus, Appellants view the issue as
whether metal salts could be present in the solution used by Moane before it
is applied to a metal substrate (i.e., before the process is complete), and the
Examiner views the issue as whether metal salts are present after such
application, when the substrates are bonded together. We find that the
Examiner provides sufficient scientific reasoning for his inference,
permissible under In re Best, 562 F.2d 1252, 1255 (CCPA 1977) ("vVhere,
as here, the claimed and prior art products are identical or substantia11y
identical, or are produced by identical or substantially identical processes)
the PTO can require an applicant to prove that the prior art products do not
necessarily or inherently possess the characteristics of his claimed
product''); see also In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990)
("[W]hen the PTO shows sound basis for believing that the products of the
applicant and the prior art are the same, the applicant has the burden of
showing that they are not.").
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Application 12/470,911
Appellants have not identified reversible error in the Examiner's
rejection of claim 1 as anticipated by Moane. Accordingly, and because
claims 3 and 5-9 stand or fall with claim 1, we sustain the rejection under 3 5
U.S.C. § 102(b) of claims 1, 3, and 5-9 overMoane.
Rejection of claims 23-25 as obvious over Moane
Each of independent claims 23-25 requires a storage stable radically
curable composition consisting essentially of at least two metal salts, one
metal salt having a standard reduction potential greater than the standard
reduction potential of one substrate, and a second metal salt having a
standard reduction potential greater than the standard reduction potential of
the other substrate. App. Br. 24--25 (Claims App'x). The Examiner
acknowledges that Moane does not teach the adhesive comprising at least
two metal salts, but finds that Moane teaches the adhesive works well on
iron- and copper-rich surfaces. Final Act. 6. Thus, the Examiner finds that
it would have been obvious to one of ordinary skill in the art at the time the
invention was made to at once envisage bonding an iron surface and a
copper surface to generate a composition containing iron salt and copper
salt. Id. Appellants contend that"[ o ]ne of ordinary skill in the art would not
deduce from Moane that the metal ion solutions are part of a storage stable
adhesive composition as in the claimed invention." App. Br. 18. Here, as is
the case with claim 1, Appellants fail to recognize that claims 23-25 are
product-by-process claims, and the issue is whether metal salts are present
when the substrates are bonded together. For claims 23-25, we find that the
Examiner provides sufficient scientific reasoning for his inference,
permissible under In re Best, 562 F.2d at 1255.
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The Examiner also finds the standard reduction potential of the iron
and copper salt is greater than that of the metal surfaces. As Appellants do
not challenge this finding, we take it as fact.
Finally, with respect to claims 23 and 25, Appellants argue that
Moane does not teach a storage stable composition disposed between two
substrates as arranged, and refer us to their argument for claim 1 on this
issue. App. Br. 19. For reasons provided above, we find Appellants'
argument unpersuasive.
Appellants have not identified reversible error in the Examiner's
rejection of claims 23-25 as rendered obvious over Moane.
DECISION/ORDER
For the above reasons, the Examiner's rejection of claims 1, 3, 5-9
and 23-25 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)(l )(iv) (2009).
AFFIRMED
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