Ex Parte Feng et al

Patent Trial and Appeal Board

Apr 18, 2016

12937923 (P.T.A.B. Apr. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/937,923 10/14/2010
22879 7590 04/20/2016
HP Inc,
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
FIRST NAMED INVENTOR
Yi Feng
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.
82247390 6509
EXAMINER
CHANG, VICTORS
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
04/20/2016 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):
ipa.mail@hp.com
barbl@hp.com
yvonne.bailey@hp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YI FENG, STERLING CHAFFINS, EMMET WHITTAKER,
VERONICA A. NELSON, and BRIAN G. RISCH
Appeal2014-007151
Application 12/937,923
Technology Center 1700
Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1, 2, 5, 6, and 21. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
Appellants' invention is best illustrated by independent claim 1,
reproduced below (emphasis added):
Appeal 2014-007151
Application 12/937 ,923
1. An adhesive tape, said adhesive tape comprising:
an adhesive material comprising:
at least 28% vinyl acetate by weight and between 65%
and 72% ethylene by weight disposed on a basefilm at a
substantially uniform thickness of up to 18 microns,
in which the adhesive material comprises a ratio of
ethylene to vinyl acetate such that the adhesive material
comprises a melt index of at least 20 g/10 min.
The Examiner maintains the following rejections:
(a) claims 1, 2, 5, 6, and 21 rejected under 35 U.S.C. § 112, second
paragraph, as indefinite for failing to particularly point out and distinctly
claim the subject matter which the applicant regards as the invention; and
(b) claims 1, 2, 5, 6, and 21 are rejected under 35 U.S.C. § 102(b) as
anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as obvious
over Farr et al. (US 2003/0052939 Al, published March 20, 2003) ("Farr").
Appellants present arguments only for independent claim 1 in
addressing both rejections before us for review on appeal. See Appeal Brief,
generally. Accordingly, we select independent claim 1 as representative of
the subject matter before us on appeal and limit our discussion to this claim.
Claims 2, 5, 6, and 21 will stand or fall with independent claim 1.
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Application 12/937 ,923
OPfNION
Rejection under 35 USC§ 112, second paragraph, (indefiniteness)
(Rejection (a))1
We REVERSE the Examiner's rejection of claims 1, 2, 5, 6, and 21
under 35 U.S.C. § 112, second paragraph, for the reasons presented by
Appellants. We add the following:
The Examiner found the language of claim 1 indefinite because the
recitation describing the adhesive as comprising ethylene and vinyl acetate
monomers is unclear as to what is being claimed, an EV A copolymer or the
individual monomers. Ans. 3. According to the Examiner, "it is clearly
improper to recite a copolymer EV A comprises 'pre-polymerized
constitutes."' Id. at 5.
We agree with Appellants that one skilled in the art would readily
appreciate the claimed percentages refer to the vinyl acetate and ethylene
constituting an ethylene vinyl acetate (EVA) adhesive. 2 App. Br. 9. The
Examiner has not adequately explained why one skilled in the art would not
have understood, as urged by Appellants in light of their Specification, that
the subject matter of independent claim 1 describes an adhesive tape
comprising an EV A adhesive material comprising vinyl acetate and
ethylene.
Accordingly, we reverse the Examiner's rejection under 35 U.S.C.
§ 112, second paragraph, for the reasons presented by Appellants and given
above.
1 For this ground of rejection, we rely on the Examiner's statement of
rejection as presented in the Answer. Ans. 2-3.
2 In light of the claim interpretation as set out by Appellants, dependent
claim 5 does not further limit claim 1.
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Appeal 2014-007151
Application 12/937 ,923
Prior Art Rejections (Rejection (b))
We have reviewed each of Appellants' arguments for patentability.
However, we determine that, on this record, Appellants have not shown
reversible error in the Examiner's prior art rejection§ 102(b) and/or§ 103(a)
of representative independent claim 1. Accordingly, we will sustain the
Examiner's prior art rejection for essentially the reasons expressed in the
Answer and we add the following for emphasis.
Independent claim 1 is directed to an adhesive tape including an
adhesive material comprising at least 28% vinyl acetate by weight and
between 65% and 72% ethylene by weight. Accordingly, the amount of
vinyl acetate ranges from 28% to 35%.
The Examiner found Farr discloses an adhesive tape for sealing
nozzles comprising a thermoplastic polymer film adhesively bonded to a
base film. Final Act. 4; Farr Figure 2, i-f 31. The Examiner found Farr
discloses the thermoplastic polymer film includes copolymers of ethylene-
vinyl acetate (EVA) with a vinyl acetate content from about 0 to about 40
weight percent. Final Act. 4; Farr i-f 33. The Examiner also found the
claimed melt index is met because Farr teaches a sealing tape having
generally the same structure/ composition, for the same end use (sealing
nozzles) and under the same conditions as the claimed invention. Final Act.
5. Thus, the Examiner determined Farr anticipates or renders obvious the
claimed invention. Id. at 4--5.
Appellants argue Farr does not anticipate the claimed invention
because Farr's preferred vinyl acetate weight percent range of from about 10
to about 25 weight percent is outside the claimed vinyl acetate range of at
least 28%. App. Br. 13; Farr i-f 33. Appellants further argue that Farr's
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Application 12/937 ,923
broader disclosed range of vinyl acetate of from about 0 to about 40 weight
percent, while overlapping the claimed range for this component, also fails
to anticipate the claimed invention because the prior art reference does not
teach the claimed 28% value for the vinyl acetate content with sufficient
specificity. App. Br. 14; Farr i-f 33.
We are unpersuaded by these arguments. In order to anticipate, a
reference must identify something falling within the claimed subject matter
with sufficient specificity to constitute a description thereof within the
purview of§ 102. In re Schaumann, 572 F.2d 312, 317 (CCPA 1978). It is
well established that specific examples of the claimed subject matter are not
necessary to establish anticipation. Rather, to anticipate, one skilled in the
art must be able to "at once envisage" the claimed subject matter in the prior
art disclosure. In re Petering, 301F.2d676, 681(CCPA1962).
As acknowledged by Appellants, Farr's disclosed range of from about
10 to about 25 weight percent vinyl acetate is directed to a preferred
embodiment within the range taught of up to 40% vinyl acetate in its EV A
adhesive. App. Br. 13; Farr i-f 33. A preponderance of the evidence supports
the Examiner's finding that one of ordinary skill in the art would have
envisaged an EVA with 28 weight percent vinyl acetate as well. As noted
by the Examiner and acknowledged by Appellants, Farr's disclosed range of
from about 0 to about 40 weight percent completely encompasses the
claimed range for the same component. App. Br. 14; Final Act. 4; Ans. 5---6;
Farr i-f 33. In re Preda, 401 F.2d 825, 826 (CCPA 1968) (In determining
whether a reference anticipates the subject matter recited in a claim, "it is
proper to take into account not only specific teachings of the reference but
also the inferences which one skilled in the art would reasonably be
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Application 12/937 ,923
expected to draw therefrom."). Not only would the use of 28% vinyl acetate
have been immediately envisaged to one of ordinary skill in the art, it also
would have been a reasonable inference to one of ordinary skill in the art to
use amounts of 28% to up to 40% vinyl acetate.
Appellants additionally argue Farr does not define the ratio of
ethylene to vinyl acetate "such that the adhesive material comprises a melt
index of at least 20 g/10 min." Claim 1; App. Br. 17.
We find this conclusory argument unavailing. Appellants have not
directed us to any disclosure in their Specification or elsewhere to
adequately show why the Examiner's finding that Farr describes useful
thermoplastic polymer films, including EV A, having a melt index that
encompasses the claimed range of at least 20 g/10 min, is in error. Ans. 1 O;
Farr i-f 26.
Thus, Appellants have not adequately explained patentable distinction
between the claimed invention and Farr. Even assuming arguendo that Farr
is not sufficiently specific to anticipate the subject matter of independent
claim 1, the claimed invention would still have been obvious to one skilled
in the art for the reasons presented by the Examiner. Final Act. 7-8.
With respect to the obviousness rejection, Appellants assert
unexpected results by the claimed invention based on Examples in the
Specification and a common Declaration under 37 C.F.R. 1.132 signed by
co-inventors Yi Feng, Sterling Chaffins, and Brian G. Risch (Declaration). 3
App. Br. 15; Declaration 5---6; Spec. Figures 7-8, i-fi-150-59. According to
Appellants, this evidence asserts unexpected results in a decrease in overall
3 The Declaration was filed on May 24, 2013 and entered into the record by
the Examiner in the Non-final Office Action of July 2, 2013.
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Application 12/937 ,923
adhesion of the adhesive material of the adhesive tape that eliminates tearing
or structural damage to the polymer material of a print cartridge when the
adhesive tape is removed. App. Br. 15-16.
The burden of establishing unexpected results rests on the person who
asserts them. Appellants may meet their burden by establishing that the
difference between the claimed invention and the closest prior art was an
unexpected difference. See In re Klosak, 455 F.2d 1077, 1080 (CCPA
1972). The unexpected results must be established by factual evidence, and
attorney statements are insufficient to establish unexpected results. See In re
Geisler, 116 F.3d 1465, 1470-71 (Fed. Cir. 1997). Further, a showing of
unexpected results supported by factual evidence must be reasonably
commensurate in scope with the degree of protection sought by the claims
on appeal. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re
Clemens, 622 F.2d 1029, 1035 (CCPA 1980).
We are unpersuaded by this evidence and agree with the Examiner's
determination that the evidence is insufficient to establish unexpected
results. Ans. 9-11.
First of all, all comparative data generated in the Specification is
based on a single sample adhesive Tape A as representative of the claimed
invention; Tape A having an EV A adhesive layer having 28% by weight
vinyl acetate and a melt flow index of 25 g/10 min and cured by irradiation at
a level of 120 kGy (12 MRad). Spec. Figures 7-8; i-fi-150-59. Appellants
have not adequately explained why this single example is representative of
the entire scope of the range of amounts of vinyl acetate, ethylene, melt
indices and thicknesses encompassed by independent claim 1. Furthermore,
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Application 12/937 ,923
the adhesive tape of claim 1 may include other adhesives, since the claim
recites the open-ended term "said adhesive tape comprising."
Second, all comparative data generated in the Specification is against
a single sample adhesive Tape B having an EV A adhesive layer having 25%
by weight vinyl acetate and a melt flow index of 2 g/10 min and cured by
irradiation at a level of 50 kGy (5 MRad). Id. Appellants have not
adequately established that disclosed adhesive Tape B is representative of
the closest prior art (Farr).
Third, as noted by the Examiner, the comparison presented on page 5
of the Declaration between adhesives 3180 and 3155 fails to disclose with
specificity the vinyl acetate content of both adhesives. Ans. 11; Deel. 5.
Thus, one skilled in the art would be unable to ascertain the significance of
the proffered comparison. Even taking into account the additional
information furnished in the Reply Brief (adhesive 3180 having a vinyl
acetate content of28% and adhesive 3155 having a vinyl acetate content of
15.5%) (Reply Br. 13) is insufficient to assess the significance of the
comparison because it is limited to a single inventive sample with a single
value (28%) for the vinyl acetate content.
On this record, Appellants have not adequately shown, much less
explained, why the evidence relied upon would have been unexpected by
one of ordinary skill in the art or is reasonably commensurate in the scope
with the claims. See, e.g., 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).
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Application 12/937 ,923
Therefore, we affirm the Examiner's prior art rejections of claims 1, 2,
5, 6, and 21 for the reasons presented by the Examiner and given above.
ORDER
The Examiner's rejection of claims 1, 2, 5, 6, and 21under35 U.S.C.
§ 112, second paragraph (Rejection (a)), is reversed.
The Examiner's prior art rejections of claims 1, 2, 5, 6, and 21 under
35 U.S.C. §§ 102(b) and 103(a) (Rejections (b)) are affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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