Ex Parte Kishioka et al

Board of Patent Appeals and Interferences

Jan 13, 2011

11077160 (B.P.A.I. Jan. 13, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte HIROAKI KISHIOKA and YUTAKA TOSAKI
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Appeal 2010-001548
Application 11/077,160
Technology Center 1700
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Before TERRY J. OWENS, PETER F. KRATZ, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL1
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 2, 4, 6 and 7, which are all of the pending claims. We
have jurisdiction under 35 U.S.C. § 6(b).

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2010-001548
Application 11/077,160

The Invention
The Appellants claim a transparent double-sided pressure sensitive
adhesive tape or sheet and a touch panel made using the tape or sheet.
Claim 1 is illustrative:
1. A transparent double-sided pressure-sensitive adhesive tape or
sheet comprising a transparent substrate and a transparent pressure-sensitive
adhesive layer disposed on each side of the substrate, and having a total light
transmittance of 85% or higher in the visible light wavelength region and a
haze of 2.0% or lower, wherein the transparent pressure-sensitive adhesive
layer disposed on at least one side of the transparent substrate is a layer
formed from a pressure-sensitive adhesive composition comprising the
following acrylic polymer (a) and oligomer (b):

acrylic polymer (a): an acrylic polymer having a weight-average
molecular weight of 500,000-900,000 formed from monomers comprising at
least one alkyl (meth)acrylate in which the alkyl group has 4-12 carbon
atoms as the main monomer ingredient and at least one acrylic acid
contained as another monomer ingredient in an amount of 3-10 parts by
weight per 100 parts by weight of all monomer ingredients,

oligomer (b): an oligomer having a weight-average molecular weight
of 3,000-6,000 formed from monomers comprising at least one ethylenically
unsaturated monomer, as the main monomer ingredient, which gives a
homopolymer having a glass transition temperature of 60-190°C and has a
cyclic structure and at least one acrylic acid contained as another monomer
ingredient in an amount of 3-10 parts by weight per 100 parts by weight of
all monomer ingredients.

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Appeal 2010-001548
Application 11/077,160

The References
Ochi 4,556,595 Dec. 3, 1985
Nakazawa2 CN 1,434,844 A Aug. 6, 2003
Kishioka 2003/0232192 A1 Dec. 18, 2003
The Rejections
The claims stand rejected under 35 U.S.C. § 103 as follows: claims 1,
2 and 4 over Nakazawa3 in view of Ochi, and claims 1, 2, 4, 6 and 7 over
Kishioka in view of Nakazawa and Ochi.
OPINION
We affirm the rejections.
Issue
Have the Appellants indicated reversible error in the Examiner’s
determination that Nakazawa (Takizawa) and Ochi would have rendered
prima facie obvious, to one of ordinary skill in the art, an acrylic polymer
and an oligomer, each made from monomers including at least one acrylic
acid, the amount of acrylic acid used in making the oligomer being 3-
10 parts by weight per 100 parts by weight of all monomer ingredients?
Findings of Fact
Takizawa discloses an acrylic pressure sensitive adhesive composition
comprising an adherent polymer (a) comprising (meth)acrylic ester
component units as principal structure units and having a molecular weight
of 50,000 or more, a tackifier resin (b) comprising (meth)acrylic ester
component units as principal structure units and having a molecular weight

2 Citations herein regarding Nakazawa are to US 6,783,850 B2 to
Takizawa et al. (issued Aug. 31, 2004) which is an English language
equivalent of Nakazawa and, instead of the Nakazawa translation of record,
is cited by the Examiner (Ans. 4).
3 The Examiner refers to Nakazawa as “Takizawa” (Ans. 4).
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Appeal 2010-001548
Application 11/077,160

of 20,000 or less (which the Examiner relies upon as corresponding to the
Appellants’ oligomer (Ans. 6)), and other monomers (c) whose principal
component is (meth)acrylic acid (col. 7, ll. 38-51). Both the adherent
polymer (a) and the tackifier resin (b) can include (meth)acrylic ester
copolymerized with monomers which can be (meth)acrylic acid (col. 10,
ll. 47-53; col. 12, ll. 41-48).
Ochi discloses that “the expression ‘(meth)acrylic’ acid denotes
acrylic acid and methacrylic acid” (col. 5, ll. 15-17).
Analysis
The Appellants argue with respect to both rejections (Br. 12, 15):
[T]he cited references do not teach or suggest at least three elements
of the present claims, i.e., the acrylic acid monomer of oligomer (b),
the feature that both acrylic polymer (a) and oligomer (b),
respectively, contain “acrylic acid” as a copolymerization monomer,
and the amount of 3-10 parts by weight of the acrylic acid monomer
of oligomer (b) per 100 parts by weight of all monomer ingredients.

Takizawa discloses that the (meth)acrylic ester in both the adherent
polymer (a) and the tackifier resin (b) can be copolymerized with monomers
including (meth)acrylic acid (col. 10, ll. 47-53; col. 12, ll. 41-48). As
indicated by Ochi, “‘(meth)acrylic’ acid denotes acrylic acid and
methacrylic acid” (col. 5, ll. 15-17). Takizawa discloses that the amount of
methacrylic acid comonomer used in making tackifier resin (b) can be
3 parts by weight per 100 parts by weight of all monomer ingredients
(Table 1 (6)), which falls within the Appellants’ 3-10 parts by weight range).
The Appellants argue that acrylic acid and methacrylic acid are not
equivalent because the glass transition temperature of a homopolymer of
acrylic acid is 106°C whereas the glass transition temperature of a
homopolymer of methacrylic acid is 228°C (Br. 10-11).
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Appeal 2010-001548
Application 11/077,160

Takizawa discloses that “[t]he glass transition temperature of the
tackifier resin of low molecular weight (b) is generally 40° C or above,
preferably in the range of 40 to 180° C” (col. 11, ll. 55-57). The Appellants’
argument is not persuasive because the Appellants have not explained why
one of ordinary skill in the art would have considered acrylic acid, a
homopolymer of which has a glass transition temperature within Takizawa’s
preferred tackifier resin (b) range, to be less suitable in making tackifier
resin (b) than methacrylic acid, a homopolymer of which has a glass
transition temperature outside that range. Moreover, the Appellants’
disclosure that the carboxyl-containing monomer ingredient for oligomer (b)
can be “(meth)acrylic acid” (Spec. 24) indicates that both acrylic acid and
methacrylic acid are suitable for making an oligomer such as the Appellants’
oligomer (b) and Takizawa’s tackifier resin (b).
The Appellants argue that “the advantageous effects of the present
invention would not have been expected” (Br. 11).
That argument is not well taken because the Appellants have not
provided a side-by-side comparison of the claimed invention with the closest
prior art which is commensurate in scope with the claims, and explained
why the results would have been unexpected by one of ordinary skill in the
art. See In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991); In
re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); In re Grasselli, 713 F.2d
731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA
1980); In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973); In re Klosak, 455
F.2d 1077, 1080 (CCPA 1972).

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Appeal 2010-001548
Application 11/077,160

Conclusion of Law
The Appellants have not indicated reversible error in the Examiner’s
determination that Nakazawa (Takizawa) and Ochi would have rendered
prima facie obvious, to one of ordinary skill in the art, an acrylic polymer
and an oligomer, each made from monomers including at least one acrylic
acid, the amount of acrylic acid used in making the oligomer being 3-
10 parts by weight per 100 parts by weight of all monomer ingredients.
DECISION/ORDER
The rejections under 35 U.S.C. § 103 of claims 1, 2 and 4 over
Nakazawa in view of Ochi, and claims 1, 2, 4, 6 and 7 over Kishioka in view
of Nakazawa and Ochi are affirmed.
It is ordered that the Examiner’s decision 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).
AFFIRMED

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