Ex Parte Kishioka

Patent Trial and Appeal Board

Jan 13, 2015

12711538 (P.T.A.B. Jan. 13, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte HIROAKI KISHIOKA1
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Appeal 2013-003216
Application 12/711,538
Technology Center 1700
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Before KAREN M. HASTINGS, MICHAEL P. COLAIANNI, and
JEFFREY W. ABRAHAM, Administrative Patent Judges.

ABRAHAM, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1–8. We have jurisdiction pursuant to
35 U.S.C. § 6(b). We affirm.

BACKGROUND

Appellant’s claimed invention relates to pressure sensitive adhesive
sheets which do not cause corrosion of metal thin films or metal oxide thin
films when attached thereto. Spec. ¶ 1.

1 According to the Appeal Brief, the Real Party in Interest is Nitto Denko
Corporation. App. Br. 2.
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Claim 1 is the only independent claim at issue on appeal and is
reproduced below from the Claims Appendix (App. Br. 16):
1. A pressure-sensitive adhesive sheet comprising at least
one pressure-sensitive adhesive layer formed of a pressure-
sensitive adhesive composition containing an acrylic
polymer (a) comprising monomer ingredients including
acrylic acid and/or methacrylic acid as an indispensable
monomer ingredient,
wherein a total content of the acrylic acid and/or the
methacrylic acid relative to the entire monomer ingredients
constituting the acrylic polymer is 10 % by weight or less,
and
wherein a total amount of an acrylic acid ion and a
methacrylic acid ion extracted from the pressure-sensitive
adhesive sheet with pure water under a condition of 100°C
for 45 minutes, as measured in accordance with an ion
chromatography, is 20 ng/cm2 or less per the unit area of the
pressure-sensitive adhesive layer.

The Examiner maintains, and Appellant appeals, the final rejection of
claims 1–8 under 35 U.S.C. § 103 as unpatentable over Tosaki (US
6,939,911 B2, issued Sep. 6, 2005) in view of Young (US 3,347,692, issued
Oct. 17, 1967), Hasegawa (JP 01240508 A, published Sep. 26, 1989), and
Yano (US 2008/0278672 A1, Nov. 13, 2008), and in light of the evidence
provided by Schoeppel (US 2004/0027981 A1, published Feb. 12, 2004).
Appellant does not separately argue the patentability of any dependent
claim. As a result, claims 2–8 stand or fall with our analysis of claim 1.

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OPINION

We refer to the Examiner’s Final Office Action for a complete
statement of the rejections. Final Act. 2–5.
Appellant does not dispute that the Examiner has established a prima
facie case of obviousness. Instead, Appellant argues that the prior art does
not render the claimed subject matter obvious because it does not enable a
person of ordinary skill in the art to make and use the claimed invention.
App. Br. 11–14. Specifically, Appellant contends that the pressure-sensitive
adhesive sheets in Tosaki do not possess the amount of (meth)acrylic acid
ions required in claim 1 (id. at 11), namely, “a total amount of an acrylic
acid ion and a methacrylic acid ion extracted from the pressure-sensitive
adhesive sheet with pure water under a condition of 100°C for 45 minutes,
as measured in accordance with an ion chromatography, is 20 ng/cm2 or less
per the unit area of the pressure-sensitive adhesive layer” (id. at 16 (Claims
Appendix)).
As Appellant acknowledges, Appellant bears the burden of providing
facts sufficient to show that the prior art method “would not produce or
would not be expected to produce the claimed subject matter.” Id. at 9
(quoting In re Kumar, 418 F.3d 1361, 1368 (Fed. Cir. 2005)); see also In re
Sasse, 629 F.2d 675, 681 (CCPA 1980).
Appellant argues that the pressure-sensitive adhesive in Tosaki does
not contain the claimed amount of (meth)acrylic acid ions because it is dried
at a temperature lower than 135oC. App. Br. 12. Appellant notes that,
according to the Specification, the preferred drying temperature for the
claimed subject matter is 135–160oC, and the preferred drying time is 40 to
300 seconds. Id. (citing Spec. 33:6–16). According to Appellant, when the
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heating temperature is below 135oC, the amount of extracted acrylic acid
ions cannot be sufficiently reduced. Id.
In support of this argument, Appellant directs us to data contained in
Table 2 of the Specification, showing Example 1 (dried at 155oC for 2 min)
has an extracted ion amount of 15 ng/cm2, whereas Comparative Example 1
(dried at 125oC for 2 min) has an extracted ion amount of 48 ng/cm2 (above
the claimed “less than 20 ng/cm2”). Appellant contends that Comparative
Example 1 in the Specification “is similar” to Examples 1 and 2 of Tosaki
because they each include the same ingredients (acrylic polymer, an acrylic
oligomer, and Tetrad C), and were formed using similar drying conditions
(the Tosaki Examples were dried at 130oC for 3 minutes and aged at 50oC
for 72 hours, while Comparative Example 1 was dried at 125oC for 2
minutes). Id. Because the level of (meth)acrylic acid ions detected in
Comparative Example 1 was above the claimed range of less than 20
ng/cm2, Appellant argued that the pressure-sensitive sheets in Tosaki would
also have (meth)acrylic acid ion levels outside the claimed range. Id.
Appellant further argues that “one of ordinary skill in the art would
neither know nor expect that increasing the drying temperature would
decrease the acrylic acid ion amount. Therefore, one of ordinary skill in the
art would not increase or expect the increase in the drying temperature of
Tosaki to produce the claimed subject matter.” Id. at 14.
After review of the respective positions provided by Appellant and the
Examiner, we find that Appellant has not demonstrated reversible error on
the part of the Examiner.
The data in Table 2 of the Specification provides information about
one adhesive sheet made using a drying temperature of 125oC and four
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sheets made using a drying temperature of 155oC. Table 2 does not contain
any data regarding adhesive sheets made using a drying temperature of
130oC, which is the temperature used in forming the Tosaki sheets. Thus,
contrary to Appellant’s contentions, Table 2 does not provide adequate
factual support for Appellant’s conclusions regarding the meth(acrylic) acid
ion amounts in Tosaki’s examples, which were dried at a different
temperature from those reported in Table 2. As a result, Appellant has not
directed us to any factual evidence regarding (meth)acrylic ion amounts in
adhesive sheets made under the drying conditions used in Tosaki. Nor has
Appellant directed us to any persuasive factual evidence demonstrating that
a temperature change of 5oC would not (significantly) impact (meth)acrylic
acid ion content, or that the drying temperature must be above 135oC, as
opposed to some other temperature between 125 and 135oC, in order to
obtain an adhesive sheet with the required level of (meth)acrylic acid ions.
In the absence of such evidence, we find that Appellant has failed to
meet the burden of proof required to rebut the Examiner’s prima facie case
of obviousness based on lack of enablement. Therefore, we affirm the
Examiner’s rejection of independent claim 1, and dependent claims 2–8,
under 35 U.S.C. §103(a).

CONCLUSION
The decision of the Examiner to reject claims 1–8 under 35 U.S.C.
§ 103 is affirmed.

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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

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