Ex parte Johnson et al.

Board of Patent Appeals and Interferences

Jun 28, 2001

08796500 (B.P.A.I. Jun. 28, 2001)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of
the Board.
Paper No. 35
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte MICHAEL A. JOHNSON and JON M. PENNYCOOK
__________
Appeal No. 1998-3322
Application No. 08/796,500
__________
HEARD: June 13, 2001
__________
Before GARRIS, WALTZ, and JEFFREY SMITH, Administrative Patent
Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the final rejection
of claims 21-35 which are all of the claims remaining in the
application.
Appeal No. 1998-3322
Application No. 08/796,500
2
The subject matter on appeal relates to a thermosettable
pressure sensitive adhesive composition and to a method of
bonding a component to a surface using such a composition.
The composition includes a polymerization product, an epoxy
resin and a pigment wherein these ingredients and the amounts
thereof are selected such that the composition is capable of
undergoing a detectable color change upon reaching a pre-
determined level of cure. This appealed subject matter is
adequately illustrated by independent claims 21 (the method)
and 35 (the composition), and a copy of these claims taken
from the appellants’ brief is appended to this decision.
The references relied upon by the examiner as evidence of
obviousness are:
Ryan 3,131,251 Apr. 28,
1964
Gaussens et al. (Gaussens) 4,230,766 Oct. 28, 1980
Brenner 4,483,951 Nov. 20, 1984
Green 4,552,604 Nov. 12, 1985
Urban et al. (Urban) 4,717,605 Jan. 5, 1988
Kitano et al. (Kitano) 5,086,088 Feb. 4, 1992
Claims 21-35 stand rejected under the first paragraph of
35 U.S.C. § 112 as being based upon a disclosure which fails
to satisfy the written description requirement of this
paragraph for the now claimed subject matter.
Appeal No. 1998-3322
Application No. 08/796,500
3
In addition, the examiner has made the following
rejections under 35 U.S.C. § 103: Claim 35 is rejected over
Kitano in view of Urban and Brenner; claims 21-26, 28-32, 34
and 35 are rejected over Green in view of Urban and Brenner;
claim 27 is rejected over Green in view of Urban, Brenner and
Gaussens; and claim 33 is rejected over Ryan in view of Green,
Urban and Brenner.
We refer to the brief and reply brief and to the answer
for a complete discussion of the opposing viewpoints expressed
by the appellants and by the examiner concerning the above
noted rejections.
OPINION
We cannot sustain any of the rejections advanced by the
examiner on this appeal.
The examiner’s section 112, first paragraph, rejection is
based upon his belief that the appellants’ specification does
not contain written description support for “the limitation in
the claims . . . requiring the selection of ALL of the
adhesive components . . . to be responsible for the color
change which occurs in the adhesive upon curing thereof” and
that the specification fails to establish “a phase separation
Appeal No. 1998-3322
Application No. 08/796,500
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between the epoxy and acrylate polymers, but rather ONLY SOME
unspecified phase separation involving the epoxy polymer
component” (answer, pages 7-8; emphasis in original).
However, we do not perceive the appealed claims as being
limited in these respects. For example, neither of the
independent claims on appeal recites that all of the adhesive
components are responsible for the color change or that a
phase separation occurs between certain components. In our
view, none of the concerns expressed by the examiner in the
answer support his conclusion that the now claimed invention
includes “new matter” (answer, page 8). It follows that we
cannot sustain the examiner’s section 112, first paragraph,
rejection of the claims on appeal.
We also cannot sustain any of the examiner’s section 103
rejections. As correctly indicated by the appellants in their
brief and reply brief, the references applied in these
rejections, while evincing that it was known in the prior art
to use the here claimed ingredients such as pigments in
adhesive compositions of the type under consideration, contain
no teaching or suggestion of combining the appellants’ claimed
ingredients in such relative amounts that a detectable color
Appeal No. 1998-3322
Application No. 08/796,500
5
change occurs at a pre-determined level of cure as required by
each of the independent claims on appeal. Concerning this
issue, the examiner urges that combining the ingredients in
the amounts taught by the applied references would have
yielded a composition that “would apparently effect a color
change therein upon cure thereof” (answer, page 10). However,
the examiner has advanced no evidentiary support (and we
perceive none independently) for the proposition that an
adhesive composition taught or suggested by the applied prior
art would necessarily or inherently undergo a detectable color
change upon reaching a pre-determined level of cure as claimed
by the appellants. Thus, we are constrained to conclude that
the examiner’s aforequoted position must be based upon
conjecture, speculation or assumption. It is appropriate,
therefore, to remind the examiner that a rejection under
35 U.S.C. § 103 must rest on a factual basis rather than
conjecture, speculation or assumption. In re Warner, 379 F.2d
1011, 1017, 154 USPQ 173, 178 (CCPA 1967), cert. denied, 389
U.S. 1057 (1968).
In summary, none of the rejections before us on this
appeal can be sustained.
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Application No. 08/796,500
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Appeal No. 1998-3322
Application No. 08/796,500
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The decision of the examiner is reversed.
REVERSED
Bradley R. Garris )
Administrative Patent Judge )
)
)
)
Thomas A. Waltz ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Jeffrey T. Smith )
Administrative Patent Judge )
BRG:tdl
Appeal No. 1998-3322
Application No. 08/796,500
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Steven E. Skolnick
3M Office of Intellectual Property Counsel
P.O. Box 33427
St. Paul, MN 55133-3427
Appeal No. 1998-3322
Application No. 08/796,500
1
APPENDIX
21. A method of bonding a component to a surface
comprising the steps of:
(a) disposing a thermosettable pressure sensitive
adhesive composition between said component and said surface,
said pressure sensitive adhesive composition comprising
(i) the polymerization product of a monomeric or
partially polymerized composition comprising at least one
polymerizable acrylic or methacrylic acid ester of a non-
tertiary alcohol;
(ii) a thermosettable epoxy resin; and
(iii) a pigment,
said polymerization product, said epoxy resin, said
pigment, and the relative amounts thereof, being selected such
that said pressure sensitive adhesive composition undergoes a
detectable color change upon reaching a pre-determined level
of cure; and
(b) curing said pressure sensitive adhesive composition
until said composition undergoes a detectable color change to
form a thermoset adhesive bonding said component to said
surface.
35. A thermosettable pressure sensitive adhesive
composition comprising:
(i) the polymerization product of a monomeric or
partially polymerized composition comprising at least one
polymerizable acrylic or methacrylic acid ester of a non-
tertiary alcohol;
(ii) a thermosettable epoxy resin; and
(iii) a pigment,
Appeal No. 1998-3322
Application No. 08/796,500
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said polymerization product, said epoxy resin, and said
pigment, and the relative amounts thereof, being selected such
that said pressure sensitive adhesive composition is capable
of undergoing a detectable color change upon reaching a pre-
determined level of cure.