Ex Parte Grittner et alDownload PDFPatent Trial and Appeal BoardJun 22, 201612625901 (P.T.A.B. Jun. 22, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/625,901 11125/2009 27384 7590 06/23/2016 Briscoe, Kurt G, Norris McLaughlin & Marcus, PA 875 Third Avenue, 8th Floor New York, NY 10022 FIRST NAMED INVENTOR Norbert Grittner 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. 101769-535 1138 EXAMINER EGWIM, KELECHI CHIDI ART UNIT PAPER NUMBER 1762 MAILDATE DELIVERY MODE 06/23/2016 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 Ex parte NORBERT GRITTNER, SVEN HANSEN, ALEXANDER PRENZEL, and STEPHAN ZOLLNER Appeal2014-005262 Application 12/625,901 Technology Center 1700 Before CHUNG K. PAK, KAREN M. HASTINGS, and JEFFREY R. SNAY, Administrative Patent Judges. SNAY, Administrative Patent Judge. DECISION ON APPEAL 1 Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 1, 3-8, 10, 11, 13, 14, 16, and 17. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. 1 We cite to the Specification ("Spec.") filed Nov. 25, 2009; Final Office Action ("Final Act.") mailed Jan. 2, 2013; Examiner's Answer ("Ans.") mailed Feb. 10, 2014; and Appellants' Appeal Brief ("App. Br.") and Reply Brief ("Reply Br."). 2 Appellants identify Tesa SE as the real party in interest. App. Br. 2. Appeal2014-005262 Application 12/625,901 BACKGROUND The subject matter involved in this appeal relates to methods for preparing homogenously crosslinked polymers. Spec. 6. Sole independent claim 1 illustrates the subject matter on appeal and is reproduced from the Claims Appendix of the Appeal Brief as follows: 3 1. A process for preparing homogeneously crosslinked polymers, comprising adding at least one difunctional or polyfunctional 2-oxazoline as a crosslinker to a polymer in the melt, further processing the polymer from the melt comprising coating the melt onto a backing material, and reacting the polymer with the difunctional or polyfunctional 2-oxzoline crosslinker to thermally crosslink the polymer, with at least part of the crosslinking reaction taking place after the further processing at a temperature below the melting temperature of the polymer, wherein the polymer contains functional groups which, at a temperature below the melting temperature of the polymer, are able to react with the oxazolines in a linking reaction in the sense of the thermal crosslinking reaction. REJECTIONS The Examiner maintained the following grounds of rejection: 4 I. Claim 16 stands rejected under 25 U.S.C. § 112, second paragraph. II. Claims 1, 3-8, 10, 11, 13, 14, 16, and 17 stand rejected under 35 U.S.C. § 102(b) as unpatentable over US 6,753,079 B2, issued June 22, 2004 ("Husemann"). 3 The second occurrence of the term, oxazoline, is misspelled in claim 1. 4 Ans. 2-3; Final Act. 2-3. 2 Appeal2014-005262 Application 12/625,901 III. Claims 1, 3-8, 10, 11, 13, 14, 16, and 17 stand rejected under 35 U.S.C. § 102(b) as unpatentable over JP 2001288437 A, published Oct. 16, 2001 ("Shiraishi"), as translated. 5 DISCUSSION I. Claim 16 depends from canceled claim 2. 6 Appellants do not contest the Examiner's rejection of claim 16 under 35 U.S.C. § 112. Reply Br. 2-3. Accordingly, we summarily sustain Rejection I. II. With regard to Rejection II, Appellants argue that the Examiner failed to identify evidence sufficient to show that Husemann's crosslinking reaction inherently takes place at a temperature below the melting temperature of the polymer. App. Br. 6. We agree. We need only discuss claim 1. That claim requires, inter alia, "reacting the polymer with the difunctional or polyfunctional 2-oxzoline (sic) crosslinker to thermally crosslink the polymer, with at least part of the crosslinking reaction taking place ... at a temperature below the melting temperature of the polymer." App. Br. 11 (claim 1). The Examiner found that Husemann teaches crosslinking being initiated in the polymer melt. Ans. 3 (citing Husemann col. 6, 11. 44--46). However, the Examiner opined that crosslinking in Husemann' s process inherently would continue after the 5 We refer to the full English-language translation of Shiraishi entered into the record on Jan. 14, 2014. 6 Appellants incorrectly state the dependency of claim 16 in the Claims Appendix. 3 Appeal2014-005262 Application 12/625,901 polymer cooled to below the melt temperature because "no quenching is taught." Ans. 5. Inherency "may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient." Continental Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991), quoting In re Oelrich, 666 F.2d 578, 581(CCPA1981). An inherent characteristic must be inevitable. See Oelrich, 666 F .2d at 5 81. We agree with Appellants that the Examiner did not identify sufficient evidence or technical reasoning to support a finding that crosslinking in Husemann necessarily continues after the polymer melt is cooled to a temperature below the melting temperature of the polymer. To the contrary, Husemann states that "[ c ]rosslinking of the hotmelt ... takes place advantageously ... by thermal crosslinking in a temperature range between 70 and 160 °C." Husemann col. 6, 11. 40-45 (emphasis added). Husemann's further teaching that residuai unreacted monomers aiso may be reacted in the course of crosslinking, Ans. 5 (citing Huseman col. 6, 11. 53- 61 ), does not provide any insight as to whether the crosslinking may or may not continue after the polymer is cooled to below the melt temperature. Moreover, Appellants' representation that oxazolines exhibit "high reactivity" at hot melt temperatures, Spec. 5, casts doubt on an inference that oxazaline crosslinking during Huseman's hot melt process necessarily would be incomplete and inherently would continue after cooling to a temperature below the polymer's melting temperature. On this record, the Examiner failed to identify evidence or provide technical reasoning to support the inherency determination. For the foregoing reasons, we cannot sustain Rejection II. 4 Appeal2014-005262 Application 12/625,901 III With regard to Rejection III, Appellants argue that Shiraishi fails to teach adding a crosslinker to a polymer melt, much less conducting at least part of the crosslinking reaction at a temperature which is below the melt temperature. Reply Br. 6-8. The Examiner failed to identify any teaching in Shiraishi that concerns a polymer melt. Neither did the Examiner identify any description in Shiraishi of conducting a crosslinking reaction at a temperature below the melting temperature of the polymer. Regarding the latter, the Examiner relies on Shiraishi's teaching of drying the polymer at a temperature as low as 60 °C as evidence that crosslinking takes place below the melting temperature of the polymer, but provides no explanation or reasoning as to why Shiraishi's drying step involves crosslinking. Ans. 5. Thus, we are persuaded by Appellants' argument, Reply Br. 6-8, that the Examiner failed to substantiate a finding that Shiraishi describes adding a crossiinker to a poiymer melt and conducting at ieast part of the crossiinking reaction at a temperature below the melt temperature. We, therefore, also do not sustain Rejection III. DECISION The Examiner's decision is affirmed-in-part. No time period for taking any subsequent action in connection with this appeal may be extended 3 7 C.F .R. § 1.13 6. AFFIRMED-IN-PART 5 Copy with citationCopy as parenthetical citation