Ex Parte Khandpur et al

Board of Patent Appeals and Interferences

Feb 4, 2009

11332775 (B.P.A.I. Feb. 4, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ASHISH K. KHANDPUR, MARK D. GEHLSEN, KENNETH J.
HANLEY, JOHN J. STRADINGER, PATRICK J. FISCHER, and
EUGENE C. OSTERTAG
____________

Appeal 2008-5285
Application 11/332,775
Technology Center 1700
____________

Decided: February 05, 2009
____________

Before BRADLEY R. GARRIS, ROMULO H. DELMENDO, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1 and 2 (Appeal Brief filed November 14, 2007, hereinafter “App.
Br.”; Final Office Action mailed April 25, 2007). We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
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STATEMENT OF THE CASE
Appellants’ invention relates to a pressure sensitive adhesive article
including “a polymeric mixture containing one or more styrenic block
copolymers and one or more polyarylene oxide polymers” (Specification,
hereinafter “Spec.,” 2, ll. 20-21).
Claim 1 on appeal reads as follows:
1. A multi-layered article comprising at least one
pressure sensitive adhesive foam layer selected from the group
consisting of
a polymeric mixture containing at least one styrenic
block copolymer and at least one polyarylene oxide polymer
wherein the pressure-sensitive adhesive foam layer has a shear
holding power of at least 1000 minutes on anodized aluminum
at 70°C when Kraton D1107 as the styrenic block copolymer
[sic], and a gel content of less than 25 percent of crosslinkable
material; and
a polymeric mixture containing at least one styrenic
block copolymer and at least one polyarylene oxide polymer
wherein the pressure sensitive adhesive foam layer has a shear
holding power of at least 100 percent more than that of a
chemically uncrosslinked foam of a similar composition but
without polyarylene oxide when tested on anodized aluminum
at a temperature of 70°C as determined by ASTM 3654
utilizing a sample with dimensions of 25.4 mm by 12.7 mm
supporting a 500 g mass, and a gel content of less than 25
percent of crosslinkable [sic, crosslinked] material.
(App. Br., Appendix I, 12.)

The Examiner relied upon the following as evidence of
unpatentability:
Hansen 4,104,323 Aug. 1, 1978
Gehlsen, et. al. (“Gehlsen”) 6,103,152 Aug. 15, 2000
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The Examiner rejected claims 1 and 2 under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings of Gehlsen and Hansen
(Examiner’s Answer mailed December 31, 2007, hereinafter “Ans.,” 3-7).1
The Examiner found that Gehlsen describes a multi-layer article
formed by providing a pressure sensitive adhesive foam layer on a major
surface of a substrate, wherein “[v]arious polymers are useful as the polymer
matrix of the adhesive foam, such as polyphenylene oxide alloys (blend of
compatible polymers), block copolymers of styrene and dienes, etc. [col. 7,
lines 31-49]” (Ans. 3). The Examiner further found that Hansen teaches “a
polyphenylene ether (i.e., polyphenylene oxide, a polyarylene oxide) resin is
melt blended with a block copolymer having at least two monoalkenyl arene
polymer end blocks and at least one elastomeric conjugated-diene mid-
block” to provide an adhesive that is not only suitable for higher service
temperature but also stable against oxidative degradation over a longer
period of time (Ans. 3-4). On the basis of these teachings, the Examiner
concluded that “it would have been obvious to one of ordinary skill in the art
to modify Gehlsen’s styrenic block copolymer based adhesive foam layer
with Hansen’s polymeric blend, motivated by a desire to obtain an adhesive
foam tape for high temperature applications [,]. . . .” (Ans. 4).
Appellants, on the other hand, assert that “Gehlsen fails to teach or
suggest a foamed article that has little or no crosslinking (i.e. low gel
content) while still exhibiting the high degree of shear strength recited in the
present claims” (App. Br. 9). Appellants further contend that “there is no
reason why one of skill in the art would seek to combine Gehlsen and

1 The Examiner states that the lack of enablement rejection under 35 U.S.C.
§ 112, ¶1, of claims 1 and 2 has been withdrawn (Ans. 2; App. Br. 6).
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Hansen to create a high temperature adhesive, when Gehlsen alone already
teaches the alternative of crosslinking to make the pressure sensitive
adhesive[]” ( App. Br. 9-10).

ISSUES
Thus, the issues arising from the respective positions of Appellants
and the Examiner are:
Have Appellants shown error in the Examiner’s obviousness
conclusion by demonstrating that the claims recite a “high degree of shear
strength” that is neither explicitly nor inherently described in the prior art?
Have Appellants shown error in the Examiner’s obviousness
conclusion because the prior art teachings do not provide a reason for one of
ordinary skill in the art to use the claimed polymeric mixture?

FINDINGS OF FACT
1. Appellants describe the invention, in its broadest form, as an
adhesive article including a polymeric mixture containing a
styrenic block copolymer and a polyarylene oxide polymer
(Spec., 2, ll. 3-4; Abstract).
2. Both Appellants’ Specification and the prior art indicate to a
person having ordinary skill in the art that the measured shear
holding power depends not only on the size of the aluminum
sample but also the weight that is supported by the sample
(Spec. 18, ll. 6-19; Gehlsen col. 12, ll. 48-63).
3. Gehlsen describes an adhesive foam layer provided on a
substrate, wherein the foam layer is produced by blending two
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or more polymers such as polyphenylene oxide alloys and block
copolymers of styrene and dienes such as KRATON D1107
(col. 1, ll. 55-67; col. 6, l. 27 to col. 7, l. 52; col. 16, ll. 57-60).
4. Gehlsen teaches that the polymers in the foam may optionally
be crosslinked to improve cohesive strength but explicitly
describes uncrosslinked foams (col. 10, ll. 49-53; col. 22, ll. 10-
15).
5. Gehlsen describes crosslinked polymers in the working
examples that provided adhesives with measured shear holding
power in excess of 10,000 minutes (col. 14, ll. 38-42; Table 1).
6. Gehlsen discloses that the uncrosslinked foams of the working
examples provided adhesives with overlap shear (2.54 cm x
1.27 cm using a 1000 g load at 25°C ranging from 83-169
minutes) (Col. 22, ll. 14-22; Table 2).
7. Hansen teaches that a blend of polyphenylene ether resin and a
styrene-diene block copolymer provides adhesive compositions
with improved high temperature performance (col. 2, l. 39 to
col. 3, l. 62).
8. It is undisputed that polyphenylene ether resins are polyarylene
oxide polymers (Ans. 3; App. Br. 8-10).
9. Appellants have not relied on side-by-side comparative
experiments to show that the actual differences between the
subject matter of claim 1 and Gehlsen provide an unexpected
result in terms of shear holding power or any other property.

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PRINCIPLES OF LAW
On appeal to this Board, Appellants must show that the Examiner
reversibly erred in finally rejecting the claims. Cf. In re Kahn, 441 F.3d 977,
985-986 (Fed. Cir. 2006); see also 37 C.F.R. § 41.37(c)(1)(vii).
It is well settled that the United States Patent and Trademark Office
(PTO) is obligated to give claim terms their broadest reasonable
interpretation, taking into account any enlightenment by way of definitions
or otherwise found in the specification. In re ICON Health and Fitness, Inc.,
496 F.3d 1374, 1379 (Fed. Cir. 2007) (“[T]he PTO must give claims their
broadest reasonable construction consistent with the specification . . .
Therefore, we look to the specification to see if it provides a definition for
claim terms, but otherwise apply a broad interpretation.”(citation omitted));
In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (“[T]he PTO gives a
disputed claim term its broadest reasonable interpretation during patent
prosecution.”).
This longstanding principle is based on the notion that “during patent
prosecution when claims can be amended, ambiguities should be recognized,
scope and breadth of language explored, and clarification imposed.” In re
Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989). That is, a patent applicant has the
opportunity and responsibility to remove any ambiguity in claim term
meaning by amending the application. “Only in this way can uncertainties
of claim scope be removed, as much as possible, during the administrative
process.” In re Zletz, 893 F.2d at 322.
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
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invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727,
1734 (2007).
KSR reaffirms the analytical framework set out in Graham v. John
Deere Co., 383 U.S. 1 (1966), which states that an objective obviousness
analysis includes: (1) determining the scope and content of the prior art; (2)
ascertaining the differences between the prior art and the claims at issue; and
(3) resolving the level of ordinary skill in the pertinent art. KSR, 127 S. Ct.
at 1734. Secondary considerations such as commercial success, long felt but
unsolved needs, or failure of others “‘might be utilized to give light to the
circumstances surrounding the origin of the subject matter sought to be
patented.’” Id. (quoting Graham, 383 U.S. at 17-18).
KSR disapproved a rigid approach to obviousness (i.e., an analysis
limited to lack of teaching, suggestion, or motivation). KSR, 127 S. Ct. at
1741 (“The obviousness analysis cannot be confined by a formalistic
conception of the words teaching, suggestion, and motivation, or by
overemphasis on the importance of published articles and the explicit
content of issued patents.”). See also DyStar Textilfarben GmbH & Co.
Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1367 (Fed. Cir. 2006)
(“Our suggestion test is in actuality quite flexible and not only permits, but
requires, consideration of common knowledge and common sense”); Alza
Corp. v. Mylan Labs., Inc., 464 F.3d 1286, 1291 (Fed. Cir. 2006) (“There is
flexibility in our obviousness jurisprudence because a motivation may be
found implicitly in the prior art. We do not have a rigid test that requires an
actual teaching to combine...”).
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KSR further instructs “that when a patent claims a structure already
known in the prior art that is altered by mere substitution of one element for
another known in the field, the combination must do more than yield a
predictable result.” KSR, 127 S. Ct. at 1740.

ANALYSIS
Appellants have argued claims 1 and 2 together (App. Br. 8-10).
Accordingly, we select claim 1 as representative and confine our discussion
to this selected claim. See 37 C.F.R. § 41.37(c)(1)(vii).
As discussed above, Appellants argue that Gehlsen does not teach
foams exhibiting high shear strength in the absence of substantial
crosslinking (App. Br. 8). Appellants’ argument, however, is based on an
erroneous interpretation of claim 1.
The claim recitation “wherein the pressure-sensitive adhesive foam
layer has a shear holding power of at least 1000 minutes on anodized
aluminum at 70°C when Kraton D1107 as the styrenic block copolymer
[sic]” (emphasis added) defines a property of the layer only when KRATON
D1107 is selected as the styrenic block copolymer. When a styrenic block
copolymer other than KRATON D1107 is used, the recitation is not a
limitation at all. That is, we construe claim 1 to encompass layers selected
from a polymer mixture containing a styrenic block copolymer other than
KRATON D1107 and polyarylene oxide as the first member of the specified
Markush group.2 Such a construction is consistent with the disclosure of
Appellants’ Specification, which does not limit the polymeric mixture to any

2 See Ex parte Markush, 1925 C.D. 126 (Comm’r Pat. 1924).
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particular shear holding power (Fact 1). Thus, claim 1 fails to distinguish
over Gehlsen in terms of shear holding power.
Even if we assume that the first member of the specified Markush
group is limited to KRATON D1107 as the styrenic block copolymer and a
shear holding power of at least 1000 minutes, we reach the same conclusion.
Gehlsen teaches both uncrosslinked and crosslinked polymers that may
include a mixture of styrenic block copolymer and polyarylene oxide (Facts
3-6). Furthermore, Hansen teaches the use of a mixture of styrene-diene
block copolymer and polyarylene oxide to provide an adhesive with
improved high temperature performance (Facts 7 and 8). Under these
circumstances, we share the Examiner’s view that a person having ordinary
skill in the art would have found it obvious to use a blend of a styrenic block
copolymer (e.g., KRATON D1107) and polyarylene oxide to make
Gehlsen’s adhesive foam, thus arriving at Appellants’ claimed subject
matter.
The specified shear holding power would necessarily follow upon the
selection and use of the claimed blend, which the prior art explicitly
discloses. In this regard, Appellants have not offered any evidence to
establish that Gehlsen’s crosslinked polymers would necessarily have gel
contents outside the claimed range (Fact 9). Nor have they demonstrated
that Hansen’s blend would not necessarily possess the claimed shear holding
power, especially in view of the absence of any limitation in the claim as to
the size of the anodized aluminum and the weight supported by the test
sample (Facts 2 and 9).
For these reasons, we uphold the Examiner’s obviousness rejection.

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CONCLUSION
On this record, we determine that Appellants have failed to show error
in the Examiner’s obviousness conclusion by demonstrating that the claims
recite a “high degree of shear strength” that is neither explicitly nor
inherently described in the prior art or by demonstrating that the prior art
teachings do not provide a reason for one of ordinary skill in the art to arrive
at an adhesive encompassed by the appealed claims.

DECISION
The Examiner’s decision to reject appealed claims 1 and 2 under 35
U.S.C. § 103(a) is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED

MAT

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