Ex Parte Hambrick

Board of Patent Appeals and Interferences

Apr 23, 2009

11089463 (B.P.A.I. Apr. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte SAMUEL M. HAMBRICK, JR.
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Appeal 2008-6256
Application 11/089,463
Technology Center 1700
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Decided:1 April 23, 2009
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Before BRADLEY R. GARRIS, MICHAEL P. COLAIANNI, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 3-22, and 24-31. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
BACKGROUND

1The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 CFR § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

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The invention relates to an acrylic-based adhesive tape system, more
particularly to a pressure sensitive acrylic-based adhesive tape system (Spec.
1, para. [0001]).
Claim 1 is illustrative:
1. An adhesive tape system, comprising:

a carrier layer having a first acrylic-based adhesive disposed on a first
side and a second acrylic-based adhesive disposed on an opposing second
side; and

a foam layer having a first side bonded to the second side of the
carrier layer by the second acrylic-based adhesive and an opposing second
side having a third acrylic-based adhesive disposed thereon;

wherein the first acrylic-based adhesive further comprises:
an acrylic polymer base;
a resin;
a solvent; and
a crosslinker.

The Examiner relies upon the following prior art references in the
rejection of the appealed claims:
Ulrich Re. 24,906 Dec. 13, 1960
Jordan 6,655,281 B1 Dec. 2, 2003

The Examiner has rejected claims 1, 3-22, and 24-31 under 35 U.S.C.
§ 103(a) as being unpatentable over Jordan in view of Ulrich.2
Appellant presents arguments concerning the rejected claims as a
group (Br. 11-14). Appellant does not advance an argument that is
reasonably specific to any particular claim on appeal. Thus, in accordance

2 The rejection of claims 9, 13, 17, 18, 21, 26, and 29 under 35 U.S.C. § 112,
second paragraph, has been withdrawn by the Examiner (Ans. 2).
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with 37 C.F.R. § 41.37(c)(1)(vii), we select claim 1 as the representative
claim on which our discussion will focus.
ISSUE ON APPEAL
The issue on appeal is whether the Appellant has shown that the
Examiner reversibly erred in rejecting the claims as obvious over the
combined teachings of Jordan and Ulrich. This issue turns on whether
Ulrich teaches or suggests use of “a solvent” and “a resin” as components of
a pressure sensitive acrylic-based adhesive.
FINDINGS OF FACT (FF)
Findings of fact throughout this decision are supported by a
preponderance of the evidence.
Appellant does not dispute the Examiner’s finding that Jordan
discloses an adhesive tape system having Appellant’s claimed carrier layer,
foam layer, and first, second, and third acrylic-based adhesives, and that the
first acrylic-based layer may comprise an acrylic polymer base and a
crosslinker, but not the claim 1 feature of the first acrylic-based adhesive
comprising “a resin” and “a solvent” (Ans. 3-5).
The Examiner correctly finds that Ulrich describes that an acrylic-
based pressure sensitive adhesive may comprise a solvent and a resin (see,
e.g., Ulrich col. 2, l. 65 to col. 3, l. 5; col. 3, ll. 67-70; col. 7, ll. 1-8).
In particular, Ulrich describes the use of “ethyl acetate solvent” in
preparing the adhesive which provides for a “viscous solution” (Ulrich, col.
2, l. 65 to col. 3, l. 5). In addition, the viscous solution is then “diluted . . .
with heptane, to provide a spreadable viscosity” (id.). Heptane is a solvent.
Furthermore, Ulrich discloses that an “acrylate polymer plasticizer”
may be used (col. 4, ll. 39-40; see also col. 4, ll. 3-11 “plasticized by the
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addition of . . . balsam-like polymer of n-butyl acrylate”). One of ordinary
level of skill in the art would appreciate that an acrylate (i.e., acrylic)
polymer is a resin, useful in adhesives, as exemplified in Hawley’s Chemical
Dictionary definition of “acrylic resin”.3
Ulrich also describes that typical pressure-sensitive adhesive formulas
may include hydrocarbon resins (col. 1, ll. 29-33).
Ulrich also states that “resinous tackifiers” may increase the strength
of the adhesion value of an acrylic-based pressure sensitive adhesive (col. 3,
ll. 67-70).
PRINCIPLES OF LAW
The Supreme Court has instructed that although the teaching,
suggestion, motivation test “captured a helpful insight,” an obviousness
analysis “need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ.”
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
The Federal Circuit recently emphasized that “[a]n obviousness
determination is not the result of a rigid formula disassociated from the
consideration of the facts of a case. Indeed, the common sense of those
skilled in the art demonstrates why some combinations would have been
obvious where others would not.” Leapfrog Enter., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007).

3 See, “acrylic resin” Hawley's Condensed Chemical Dictionary, Van
Nostrand Reinhold, 10th Edition, p. 17, 1981 (“Thermoplastic polymers or
copolymers of acrylic acid, methacrylic acid, esters of these acids, or
acrylonitrile. . . . Use: . . . Aqueous emulsions: adhesives, laminated
structures, fabric coatings, nonwoven fabrics. . .”)
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“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR, 550 U.S. at 416. The question to be asked is “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” KSR, 550 U.S. at 417.
The burden is on Appellant to identify reversible error in the appealed
§ 103 rejection. Cf. In re Kahn, 441 F.3d 977, 985-986 (Fed. Cir. 2006); see
also 37 C.F.R. § 41.37(c)(1)(vii).
ANALYSIS
The issue on appeal is whether the Examiner has reversibly erred
because, according to Appellant, Ulrich does not teach or suggest the use of
a solvent or a resin with a pressure sensitive adhesive (see App. Br. 10-14;
Reply Br. 3-7).
Appellant’s contention that Ulrich does not teach or suggest use of a
solvent is not persuasive of reversible error, since Ulrich describes use of the
ethyl acetate solvent to make a “viscous solution” of adhesive, which is
further diluted with another solvent (e.g., heptane) to provide an adhesive of
spreadable viscosity.
Appellant’s contention that the acrylate polymer plasticizer of Ulrich
is not a resin is not persuasive of reversible error, since acrylic resins are
defined as acrylate polymers, and further defined as useful in adhesives. It is
well settled that claim language must be given its broadest reasonable
interpretation during ex parte prosecution. Appellant has not provided any
credible evidence or reasoning to refute the Examiner’s reasonable position
that an acrylate polymer as described in Ulrich would have been “considered
to be a resin” by one of ordinary skill in the art (Ans. 7).
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Even assuming arguendo that Appellant was correct that the acrylate
polymer plasticizer of Ulrich was not a resin, the Examiner alternately relies
upon Ulrich’s description of “resinous tackifiers” as evidence that it was
known to incorporate a resin into a pressure sensitive acrylic adhesive. We
reject Appellant’s argument that Ulrich’s teaching of the disadvantages of a
resinous tackifier is tantamount to the sort of "teaching away" that is
evidence of nonobviousness (App. Br. 14). Ulrich describes in an example
that “[t]he adhesion value may be increased by the addition of resinous
tackifiers, but the elastic strength of the adhesive bond is then inadequate”
(Ulrich, Example 3, col. 3, ll. 67-70). Certainly, skill in the art is presumed
and we find that one of ordinary skill in the art would have found it obvious
to weigh the advantages and disadvantages of a resinous tackifier in any
specific adhesive composition.4

4 It is well settled that, “in a section 103 inquiry, ‘the fact that a specific
[embodiment] is taught to be preferred is not controlling, since all
disclosures of the prior art, including unpreferred embodiments, must be
considered.”’ Merck & Co. v. Biocraft Laboratories Inc., 874 F. 2d 804, 807
(Fed. Cir. 1989) (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976))
Thus, “[a]ll the disclosures in a reference must be evaluated, including
nonpreferred embodiments, and a reference is not limited to the disclosure of
specific working examples.” In re Mills, 470 F.2d 649, 651, CCPA 1972)
(citations omitted). See also In re Boe, 355 F.2d 961(CCPA 1966) ("All of
the disclosures of a reference must be evaluated for what they fairly teach
one of ordinary skill in the art. Thus,...this court affirmed rejections based on
art which we concluded rendered the claimed invention obvious despite the
fact that the art teachings relied upon in all three cases were phrased in terms
of a non-preferred embodiment or as being unsatisfactory for the intended
purpose.")

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In any event, as pointed out by the Examiner, Ulrich also describes
that “hydrocarbon resins” are known components of pressure-sensitive
adhesive formulas (Ans. 7).
Therefore, based on the teachings of Ulrich, we have no trouble
finding that one of ordinary skill in the art would have appreciated that “a
solvent” may have been used in an acrylic-based pressure sensitive adhesive,
and that “a resin” was also recognized to be a useful component of a
pressure sensitive adhesive, such as the acrylic-based pressure sensitive
adhesive of Jordan.
Furthermore, Appellant has not presented any credible evidence or
reasoning that the inclusion of both known additives (a solvent and a resin)
in a pressure sensitive adhesive such as taught in Jordan was “uniquely
challenging or difficult for one of ordinary skill in the art” or “represented an
unobvious step over the prior art.” See, e.g., Leapfrog Enter., Inc., 485 F.3d
at 1162.
Therefore, it would have been prima facie obvious at the time the
invention was made to have used such components in the pressure sensitive
acrylic adhesive of Jordan for the reasons disclosed in Ulrich. See, e.g.,
KSR, 550 U.S. at 421 (one of ordinary skill in the art is “also a person of
ordinary creativity, not an automaton”). The “improvement” herein appears
to be no more than the predictable use of a solvent and a resin in an adhesive
formulation, each for its known purpose. See KSR, 550 U.S. at 416. A
person of ordinary skill in the art would have reasonably expected that use of
these two known additives in the acrylic-based pressure sensitive adhesive
of Jordan would have resulted in a successful pressure sensitive adhesive
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composition. Pfizer, Inc. v. Apotex, Inc., 480 F. 3d 1348, 1364 (Fed. Cir.
2007) (“the expectation of success need only be reasonable, not absolute”).
The obviousness conclusion in this case is bolstered by the breadth of
claim 1 which does not require any specific “solvent” or “resin”, nor any
specific amount of any of the components of the first acrylic-based adhesive
as claimed.5 Furthermore, whether the solvent used in the adhesive
evaporates or not is immaterial (compare, e.g., Ans. 6 and Reply Br. 4, 5),
since claim 1 may be fairly read to encompass a “tape system” wherein the
adhesive was applied in a formulation that includes a solvent to provide for a
spreadable viscosity as taught by Ulrich.6
In summary, we fully agree with the Examiner’s conclusion that it
would have been prima facie obvious to use both a solvent and a resin in
Jordan’s acrylic-based pressure sensitive adhesive, and thus arrive at
Appellant’s claimed invention as set forth in claim 1 (Ans. 3-5).
CONCLUSION
For the foregoing reasons, as well as those expressed in the Answer,
Appellant has not established that the Examiner reversibly erred in rejecting
the claims as obvious over the combined teachings of Jordan and Ulrich.
Accordingly, we sustain the Examiner’s § 103 rejection of claims 1,
3-22, and 24-31 based on the combined teachings of Jordan and Ulrich.

5 Further, we agree with the Examiner’s implicit finding that it would have
been obvious to determine workable or optimum ranges for the amounts of
the claimed components of the acrylic-based adhesive that include the
amounts claimed, e.g., in dependent claim 3 (Ans. 5). See, In re Boesch, 617
F. 2d 272, 276 (CCPA 1980); also, In re Aller, 220 F. 2d 454, 456 (CCPA
1955).
6 Indeed, Appellant’s Specification describes that the first acrylic-based
adhesive “is dried or cured in an oven” (Spec. 7, para. [0008]).
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ORDER
The Primary Examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a).
AFFIRMED

PL Initial:
sld

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