Ex Parte He et al

Board of Patent Appeals and Interferences

Jul 5, 2011

10779505 (B.P.A.I. Jul. 5, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/779,505 02/13/2004 Qiwei He 3075.NWN 8910
7590 07/05/2011
Cynthia L. Foulke
NATIONAL STARCH AND CHEMICAL COMPANY
10 Finderne Avenue
Bridgewater, NJ 08807-0500
EXAMINER
MULLIS, JEFFREY C
ART UNIT PAPER NUMBER
1765
MAIL DATE DELIVERY MODE
07/05/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte QIWEI HE
and Michael G. Harwell
________________

Appeal 2010-003736
Application 10/779,505
Technology Center 1700
________________

Before TERRY J. OWENS, CATHERINE Q. TIMM, and
MARK NAGUMO, Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge Nagumo.

Opinion Concurring-in-part filed by Administrative Patent Judge Timm.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL1

1 Certain issues in this appeal are closely related to issues in the
Appeal 2011-005552, which we also decide today.
Appeal 2010-003736
Application 10/779,505

2
A. Introduction2
Qiwei He and Michael G. Harwell (“He”) timely appeal under
35 U.S.C. § 134(a) from the final rejection3 of claims 1-4 and 6-12, which
are all of the pending claims. We have jurisdiction. 35 U.S.C. § 6.
We AFFIRM.
The subject matter on appeal relates to hot melt adhesives said to be
useful as “elastic attachment adhesives.” The 505 Specification teaches that
adhesives suitable for attachment to elastic substrates “exhibit[] good creep
performance when used as an elastic attachment adhesive in the manufacture
of articles comprising an elastic region.” (Spec. 2, ll. 1-2.) A measure of
creep performance is provided by the “% creep,” which is defined as the
difference between the starting length and the final length, relative to the
starting length, of an elastic filament adhered initially in the stretched
condition between two nonwoven sheets, that is then allowed to relax for
a 4-hour period at 100°F. (Id. at 12, last two paras.) An average % creep
of 4.1 % is said to be “good.” (Id. at 13, Table 1 [the working example].)
The 505 Specification also indicates that elastic attachment adhesives have a
viscosity at 300°F (approximately 150°C) of about 7300 centipoise (“cP”).
(Id.) Good creep performance is said to require an adhesive with excellent
toughness. (Id. at 2, last para.)

2 Application 10/779,505, Elastic Attachment Adhesive Containing Radial
Block Copolymer, filed 13 February 2004. The specification is referred to as
the “505 Specification,” and is cited as “Spec.” The real party in interest is
listed as Henkel AG & Co., KGaA (Appeal Brief, filed 10 June 2009
(“Br.”), 1.)
3 Office action mailed 10 September 2008
Appeal 2010-003736
Application 10/779,505

3
Representative Claim 1 reads:
1. A hot melt adhesive comprising
a radial block copolymer component comprising
(PS-PI-PB)nX
wherein PS is polystyrene, PI is polyisoprene and
PB is polybutadiene, X is the residue of a
multifunctional coupling agent used in the
production of the radial block copolymer, and n is
equal to or greater than 3 and represents the
number of PS-PI-PB arms appended to X,
said radial block copolymer having a styrene
content of from 25 wt % to about 50 wt %,
a linear triblock copolymer, and
a tackifying resin,
wherein, based on the weight of the adhesive composition,
the radial block copolymer component is present in
amounts of from 15 wt % to about 35 wt %,
the linear polymer is present in amounts up to
about 20 wt %,
the tackifying resin is present in amounts of from
about 30 to about 70 wt %,
said adhesive being suitable for use as an elastic
attachment adhesive.
(Claims App., Br. 10; indentation and paragraphing added.)
Claim 2 depends from claim 1 and limits the number average
molecular weight of each arm of the radial block copolymer.
Claim 3 reads:
3. The adhesive of claim 2 wherein the radial block
copolymer component has a SIB percentage of less than
about 25 %, based on the amount of the radial block
copolymer component.
Appeal 2010-003736
Application 10/779,505

4
(Claims App., Br. 10.)
The Examiner has maintained the following grounds of rejection:4,5
A. Claims 3 and 4 stand rejected under 35 U.S.C. §112(2).
B. Claims 1-4 and 6-12 stand rejected under 35 U.S.C. § 102(b) in
view of Diehl.6
C. Claims 1, 2, and 6-9 stand rejected under 35 U.S.C. § 103(a) in
view of Lechat.7
D. Claims 1-4 and 6-9 stand rejected under 35 U.S.C. § 103(a) in
view of Kueppers.8
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
He identifies related appeals in two applications,9 which also were
filed on 13 February 2004, by the same inventors, and assigned to Henkel.

4 Examiner’s Answer mailed 3 September 2009 (“Ans.”).
5 The Examiner has withdrawn rejections of claims 1-4 and 6-9 as
anticipated by Asahara (U.S. Patent 5,532,319); rejections of claims 10
and 11 in view of Kueppers, and a provisional obviousness-type double
patenting rejection in view of 10/779,420 (now U.S. Patent 7,655,720).
(Ans. 2, para. (6).)
6 Charles F. Diehl et al., Radial Block Copolymers Containing Butadiene
Endblock, U.S. Patent 5,292,819 (1994).
7 Jacques Bernard Lechat et al., Radial Block Copolymers and Adhesives
Based Thereon with Improved Die-Cutting Performance, U.S. Patent
Application Publication 2005/0020773 A1 (2005), based on an international
application filed 18 September 2002.
8 Michelle C. Kueppers, Low Application Temperature Hot Melt with
Excellent Heat and Cold Resistance, U.S. Patent 5,939,483 (1999).
Appeal 2010-003736
Application 10/779,505

5
The appeal in 10/779,420 was mooted by allowance10 after the appeal brief
was filed. We decide Appeal 2011-005552 in application 10/779,420 today
in view of a closely related issue regarding prior art reference Kueppers.
The claims of the three applications are directed towards elastic
attachment adhesives. The main difference is the identity and the amount of
the radial block copolymer, as summarized in the following table:
Application radial block relative amount
420 (PS-PI-PB)nX < 15 wt %
492 (PS-PI)nX < 15 wt %
505 (PS-PI-PB)nX ~(15 - 35) wt %
where PS is polystyrene, PI is polyisoprene, and PB is polybutadiene.
The Examiner holds claim 3 (and claim 4) to be indefinite because
they recite “that the radial copolymer is part diblock despite the fact that a
diblock copolymer is not a radial block copolymer as the term is normally
used in the art nor as defined by the structure of claim 1.” (Ans. 3; FR 2.)
The Examiner also holds that “it is not clear what the percentage of claim 3
is based on since this is unstated.” (Id.)
This rejection is without merit. First, the Examiner appears to be
referring to the original claim, not claim 3 as amended on 2 June 2008.
Second, as He explains, both the 505 Specification and Lechat explain that
radial block copolymers have various di-block percentages due to less than
100% coupling efficiencies. (Br. 4; see also Spec. 3, 2d full para.; Lechat 5,

9 Related Proceedings App., Br. 14.
10 U.S. Patent 7,655,720 B2, issued 2 February 2010.
Appeal 2010-003736
Application 10/779,505

6
paras. [0052] and [0064].) Moreover, the Examiner does not explain why
basing the percentages on the amount of radial block component leaves a
problem for the ordinary adhesives formulator. We REVERSE the rejection
for indefiniteness.
He argues (Br. 6) that the rejection in view of Diehl fails for lack of
disclosure of the presence of a linear [tri]block copolymer in Examples 1-4,
on which the Examiner relies (Ans. 5.) The Examiner argues that the
coupling reaction taught by Diehl would result in a mixture of partially and
fully coupled materials that would be expected to contain linear triblock SBS
copolymers as well as four-armed radial block copolymers. (Ans., para.
bridging 6-7.) The Examiner’s argument is supported by Diehl’s description
of Examples 1 through 4, on which the Examiner relies. Diehl reports the
step-wise anionic polymerization of styrene, followed by isoprene, followed
by butadiene. Size exclusion chromatography of the coupled polymer
revealed two peaks, one corresponding to the radial block, and the other
corresponding to a “diblock” of polystyrene and “polydiene,” present in
amounts of 22%, 14%, 13%, and 13% of the total amount of polymer, for
Examples 1-4, respectively. (Diehl, col. 9, l. 44, through col. 11, l. 36.)
Each of these values, including the 22% reported in Example 1, meets the
limitation of “about 20 wt%” recited in claim 1. The term “about” indicates
some variability, and He has not come forward with any credible evidence or
argument that 22 wt% differs substantially from 20 wt%. As He presents no
other arguments against anticipation by Diehl, we conclude that He has
failed to demonstrate harmful error in the Examiner’s rejection.
Appeal 2010-003736
Application 10/779,505

7
The Examiner finds that Lechat discloses adhesive compositions that
overlap the ranges of components recited in the appealed claims. (Ans. 4.)
The Examiner finds further that Lechat does not provide any examples of
compositions meeting all of the limitations, but argues that it would have
been obvious to arrive at such compositions “by selecting from the various
disclosures of the reference . . . in the expectation of adequate results.” (Id.)
He objects that the preferred amounts of styrene and di-block material
disclosed by Lechat are not within the scope of the appealed claims (Br. 5,
1st para.), and concludes that “[a] polymer of the type disclosed for use in
appellants’ claimed hot melt adhesive would not be [sic: would not have
been] obvious from the disclosure of Lechat” (id.). He objects further that
Lechat does not disclose hot melt adhesives within the scope of the appealed
claims. (Id., 2d para.) He also states that the pressure sensitive adhesive
compositions disclosed by Lechat “would not be suitable for use as an
elastic attachment adhesive.” (Id., 3d para.)
He’s arguments are not persuasive of harmful error in the Examiner’s
rejection. The failure of Lechat to disclose examples that meet the
limitations of the claims is of no moment in an obviousness rejection. He
has not come forward with any credible evidence or argument demonstrating
harmful error in the Examiner’s argument that compositions within the
scope of Lechat’s disclosure would have been obvious. In particular, He’s
unsupported statement that adhesives disclosed by Lechat would not be
suitable for elastic attachment adhesives is mere attorney argument that we
need not and do not credit on the present record.
Appeal 2010-003736
Application 10/779,505

8
Regarding He’s references to the “diblock” copolymers disclosed by
Lechat (Br. 5), we note that the radial block copolymers described in
Examples A and B (Lechat 2, paras. [0113]-[0116]) are prepared by
sequential anionic polymerization of styrene, isoprene, and butadiene,
followed by the addition of SiCl4 as the radial block coupling agent. (Id.
at [0113] and [0115].) The arms of the radial block are thus reasonably SIB
triblock copolymers, and the uncoupled “diblock” copolymers are SIB
triblocks. It has not escaped our notice that the 505 Specification indicates
that ABA triblock copolymers in which the A end-blocks are nonelastomeric
are preferred. (Spec. 4.) We shall not, however, read limitations from the
specification into the claims: nor are we inclined to advance possible
arguments for patentability that the appellants have not advanced
themselves.
We conclude that He has not shown harmful error in the rejection for
obviousness based on Lechat.
Finally, He argues that Kueppers would not have motivated the artisan
to make the adhesives covered by the appealed claims, pointing to the
packaging applications and the low viscosities of the exemplified adhesives.
(Br. 6-7.) Based solely on this limited response, which is not supported by
further explanation or citation to credible evidence of record, we would not
be inclined to find harmful error demonstrated regarding the Examiner’s
reliance on Kueppers. However, in Appeal 2010-005552 in
the 420 Application, we find that He, in that case, demonstrates by the
preponderance of the evidence that the hot melt adhesives described and
Appeal 2010-003736
Application 10/779,505

9
suggested by Kueppers do not possess properties corresponding to an elastic
attachment adhesive.
More particularly, Kueppers seeks to provide a low application
temperature hot melt adhesive that exhibits excellent heat and cold
resistance. (Kueppers col. 1, ll. 10-13.) According to Kueppers, “[t]he
substrates to be bonded include virgin and recycled kraft, high and low
density kraft, chipboard, and various types of treated and coated kraft and
chipboard.” (Id. at ll. 18-22.) Moreover, Kueppers teaches that the hot melt
adhesive must exhibit full fiber tearing bonds. In Kueppers’ words, “[t]his
means that all the fiber must be removed from the substrate along the entire
length of the adhesive bead when the bond is separated by hand.”
(Id. at ll. 23-25.) Neither the rigid and nonelastic substrates for which
Kueppers provides adhesives, nor the adhesive properties described by
Kueppers as being suitable for bonding such substrates, suggest, on their
face, that such adhesives have properties that would make them useful for
bonding elastic substrates. Nor has the Examiner come forward with any
credible evidence or argument that persons skilled in the art would have
considered Kueppers’ adhesives to be useful for such purposes. In light of
the parallel treatment in Kueppers of adhesives based on (PS-PI-PB)nX and
(PS-PI)nX radial block copolymers, we conclude that the same conclusion
should apply in this case. We therefore REVERSE the obviousness
rejection based on Kueppers.
Appeal 2010-003736
Application 10/779,505

10
C Order
We REVERSE the rejection of claims 3 and 4 under
35 U.S.C. §112(2).
We AFFIRM the rejection of claims 1-4 and 6-12 under
35 U.S.C. § 102(b) in view of Diehl.
We AFFIRM the rejection of claims 1, 2, and 6-9 under
35 U.S.C. § 103(a) in view of Lechat.
We REVERSE the rejection of claims 1-4 and 6-9 under
35 U.S.C. § 103(a) in view of Kueppers.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED

ssl

Appeal 2010-003736
Application 10/779,505

1

TIMM, Administrative Patent Judge.

With respect to the rejection of claims 1-4 and 6-9 under 35 U.S.C.
§ 103(a) over Kueppers, I conclude that the weight of the evidence supports
the position of the Examiner for the reasons I discuss in the Decision in
Appeal No. 2011-005552 in Serial No. 10/779,492. Simply stated, the
claims limitation “suitable for use as an elastic attachment adhesive” does
not reasonably appear to distinguish the claimed adhesives from Kueppers’
adhesives. Therefore, I would sustain the Examiner’s rejection over
Kueppers.