Ex Parte Haner et al

Board of Patent Appeals and Interferences

Oct 31, 2006

10140692 (B.P.A.I. Oct. 31, 2006)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte DALE I HANER, ABHAY K. DESHPANDE, JUSTIN A MEHAFFY,
and GEORGE A. LOCKO
__________

Appeal No. 2006-2538
Application No. 10/140,692
__________

ON BRIEF
__________

Before ADAMS, GRIMES, and LEBOVITZ, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL

This appeal involves claims to a hot melt adhesive comprising a modified rosin-
terpene, which the examiner has rejected as obvious. We have jurisdiction under
35 U.S.C. § 134. We reverse.
Background
“Hot melt adhesives are widely used for various commercial applications. . . .
Such hot melt adhesives are applied to a substrate while in [their] molten state and
cooled to harden the adhesive layer.” Specification, page 1. “Most commercially
available hot melt adhesives require temperatures of 350°F (177°C) or greater . . . to
achieve a satisfactory application viscosity. While adhesive formulations that can be
Appeal No. 2006-2538 Page 2
Application No. 10/140,692

applied at temperatures below 300°F (149°C) can be prepared using low molecular
weight components or a high wax content, application viscosity and adhesive properties
suffer.” Id.
The specification discloses “a hot melt adhesive comprising an adhesive polymer
and a tackifier. Tackifiers required for use in the practice of the invention are modified
rosin[ ] terpenes, preferably phenolic modified rosin-terpenes.” Page 2.
“Rosin is mainly a mixture of C20, tricyclic fused-ring, monocarboxylic acids,
typified by pimaric and abietic acids, which are commonly referred to as ‘resin acids.’”
Page 4. “Terpenes are cyclic, unsaturated, C10 hydrocarbons obtained from the Kraft
process for making paper, turpentines and citrus oils. Examples of terpene compounds
include alpha-pinene, beta-pinene, d-limonene, . . . and the like.” Page 5.
The specification includes a working example describing preparation of a phenol
modified rosin-terpene. Pages 18-19. The exemplary procedure involves dissolving
phenol in a xylene solvent, then adding a catalyst and a mixture of a terpene and a
rosin, also dissolved in xylene.
According to the specification, the modified rosin-terpenes can be mixed with
“[a]ny base polymer suitable for use in formulating hot melt adhesives, as are well
known to those skilled in the art. . . . Such polymers include amorphous polyolefins,
ethylene-containing polymers and rubbery block copolymers.” Page 9.
The resulting hot melt adhesives are said to be “particularly useful in case
sealing applications where exceptionally high heat resistance in addition to cold
resistance is important, i.e., in hot filled packaging applications; e.g. sealing and closing
operations for cartons, cases, or trays used in packaging molten cheese, yogurt or

Appeal No. 2006-2538 Page 3
Application No. 10/140,692

freshly baked goods which are subsequently subjected to refrigeration or freezing, and
for corrugated cases.” Page 15.
Discussion
1. Claims
Claims 1-16 and 21-24 are pending and on appeal. Claim 1 is representative
and reads as follows:
1. A hot melt adhesive comprising an adhesive polymer and a modified rosin-
terpene, and having a viscosity of less than about 3000 cps at 150°C.

“[A] claim preamble has the import that the claim as a whole suggests for it. In
other words, when the claim drafter chooses to use both the preamble and the body to
define the subject matter of the claimed invention, the invention so defined, and not
some other, is the one the patent protects.” Bell Commc’ns Research Inc. v. Vitalink
Commc’ns Corp., 55 F.3d 615, 620, 34 USPQ2d 1816, 1820 (Fed. Cir. 1995).
The preamble of claim 1 states that the claimed composition is a “hot melt
adhesive.” The phrase “hot melt adhesive” itself implies that the composition is solid at
room temperature and melts when heated. The specification states that hot melt
adhesives are applied melted and harden on cooling to provide an adhesive layer.
Page 1. We interpret the preamble of claim 1 to limit the claimed composition to one
having the properties disclosed for hot melt adhesives: the claimed composition is solid
at room temperature, melts when heated, and cools to form an adhesive layer.
Claim 1 also requires that the composition comprise an adhesive polymer and “a
modified rosin-terpene,” and that it has a viscosity of less than 3000 cps at 150°C.

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Application No. 10/140,692

2. Obviousness
The examiner rejected claims 1-16 and 21-24 under 35 U.S.C. § 103 as obvious
in view of Mehaffy1 and Takigawa.2 The examiner separately rejected claims 1-16 and
21-24 under 35 U.S.C. § 103 as obvious in view of either Paul3 or Haner,4 combined
with Takigawa. Both rejections rely on the same rationale, so we will consider them
together.
The examiner cited the primary references (Mehaffy, Paul, and Haner) for their
disclosure of hot melt adhesives comprising an adhesive polymer and a tackifier; the
examiner noted that each of the references discloses that the tackifier could be a
phenolic modified terpene or a phenolic modified rosin, or (according to Paul and
Haner) a mixture of the two. See the Examiner’s Answer, pages 3 and 5.
The examiner acknowledged that none of the primary references teach a
modified rosin-terpene, but cited Takigawa as suggesting this limitation. The examiner
noted that “Takigawa teaches an adhesive comprising a phenolic modified rosin-terpene
tackifier, which results in excellent balance among various properties including
adhesiveness, holding powder [sic, power] and tack, and excellent warpage resistance
(see abstract).” Examiner’s Answer, page 3. The examiner concluded that
it would have been obvious to one of ordinary skill in the art, at the time
the invention was made, to have employed a phenolic modified rosin-
terpene tackifier, as taught by Takigawa, in the adhesive of Mehaffy, for
the purpose of improving balance among adhesiveness, tackiness, and
warpage resistance.

1 Mehaffy et al., U.S. Patent 6,117,945, issued Sept. 12, 2000
2 Takigawa et al., JP 07-082541, published March 28, 1995
3 Paul et al., U.S. Patent 5,685,758, issued Nov. 11, 1997
4 Haner et al., U.S. Patent 6,593,407, issued July 15, 2003 (application filed Feb. 6, 2001)

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Application No. 10/140,692

Id., page 4. See also page 6 (same reasoning relied on for combining Takigawa with
Paul or Haner).
Appellants argue that Takigawa’s adhesive is a solution acrylic adhesive, which
has properties that differ from those of the claimed hot melt adhesive. See the Appeal
Brief, pages 5-6. Appellants argue that “[t]here is no teaching in the references of
record that hot melt adhesives are prone to warpage and, as such, no motivation to
improve the balance among adhesiveness[,] tackiness and warpage resistance by
combining the Mehaffy and Takigawa references.” Id., page 6. See also page 12
(same argument with respect to the combination of Takigawa with Paul or Haner).
“[T]he Examiner bears the burden of establishing a prima facie case of
obviousness based upon the prior art. ‘[The Examiner] can satisfy this burden only by
showing some objective teaching in the prior art or that knowledge generally available to
one of ordinary skill in the art would lead that individual to combine the relevant
teachings of the references.’” In re Fritch, 972 F.2d 1260, 1265, 23 USPQ2d 1780,
1783 (Fed. Cir. 1992) (citations omitted). “When determining the patentability of a
claimed invention which combines two known elements, ‘the question is whether there
is something in the prior art as a whole to suggest the desirability, and thus the
obviousness, of making the combination.’” In re Beattie, 974 F.2d 1309, 1311-12,
24 USPQ2d 1040, 1042 (Fed. Cir. 1992).
In this case, we agree with Appellants that the examiner has not adequately
explained how the cited references would have suggested the claimed composition to a
person of ordinary skill in the art. The claimed composition is a hot melt adhesive
comprising an adhesive polymer and a modified rosin-terpene.

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Application No. 10/140,692

The primary references cited by the examiner all disclose hot melt adhesives
comprising an adhesive polymer and a tackifier. Haner, the closest prior art, teaches a
“hot melt adhesive comprising an adhesive polymer, a modified rosin and/or modified
terpene” preferably phenolic-modified rosin and phenolic-modified terpene. Col. 2, lines
42-58. Neither Haner nor the other primary references teach a modified rosin-terpene.
Takigawa discloses a phenol-modified rosin-terpene, produced by a process
similar to the working example in the instant specification: dissolving phenol in a
solvent, adding an acid catalyst and a mixture of a terpene and a rosin. Compare
¶ [0006] of Takigawa with pages 18-19 of the instant specification. Takigawa teaches
using the phenol-modified rosin-terpene as a tackifier in “acrylic pressure sensitivity type
adhesives.” ¶ [0013]. The adhesive formulation is disclosed to be useful for making
“pressure sensitive adhesive tape or an acrylic pressure sensitivity type adhesives
constituent useful to manufacture of sheets” (¶ [0001]) or double-faced tape (¶ [0003]).
In that context, Takigawa teaches that using phenol-modified rosin-terpene as a
tackifier produced “an excellent balance among various properties including
adhesiveness, holding powder [sic] and tack, and especially excellent warpage
resistance as compared with such a composition containing a combination of a rosin
phenol resin with a terpene phenol resin as the tackifying resin.” Abstract.
The problem with the examiner’s rejection is that none of the cited references
teach that the properties conferred on double-faced tape by the use of a phenol-
modified rosin-terpene would also be conferred on the hot melt adhesives taught by the
primary references. Nor do any of the references teach that the hot melt adhesives
taught by the primary references were in need of improved balance among properties

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Application No. 10/140,692

such as adhesiveness, holding power and warpage resistance. Thus, as Appellants
have argued, the disclosure by Takigawa that using a phenol-modified rosin-terpene as
a tackifier improves such properties in double-faced tape would not necessarily have led
those skilled in the art to expect that using phenol-modified rosin-terpene as a tackifier
in a hot melt adhesive.
Different adhesives are used for different purposes and require different
properties. A hot melt adhesive must achieve a satisfactory viscosity at an elevated
temperature and harden to form an adhesive layer when it cools. Specification, page 1.
Double-faced adhesive tape is not heated prior to use and cooled after application; the
adhesive in double-faced tape therefore has different properties than a hot melt
adhesive. The evidence of record does not support the examiner’s position that those
skilled in the art would have been motivated to use a phenol-modified rosin-terpene as a
tackifier in a hot melt adhesive based on Takigawa’s teaching that its use in double-
faced tape conferred an advantageous balance of properties.

Appeal No. 2006-2538 Page 8
Application No. 10/140,692

Summary
The examiner has not adequately shown that a person of ordinary skill in the art
would have been motivated to combine the modified rosin-terpene taught by Takigawa
to be useful in double-faced tape with the hot melt adhesive taught by the other
references. We therefore reverse the rejections on appeal.

REVERSED

DONALD E. ADAMS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
ERIC B. GRIMES )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
RICHARD M. LEBOVITZ )
Administrative Patent Judge )

EBG/lbg