Ex Parte Koepnick et al

Board of Patent Appeals and Interferences

Apr 29, 2011

11384184 (B.P.A.I. Apr. 29, 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.
11/384,184 03/17/2006 Friedhelm Koepnick H 5658 PCT/US 9824
423 7590 04/29/2011
HENKEL CORPORATION
One Henkel Way
ROCKY HILL, CT 06067
EXAMINER
NGUYEN, VU ANH
ART UNIT PAPER NUMBER
1762
MAIL DATE DELIVERY MODE
04/29/2011 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 FRIEDHELM KOEPNICK,
MARTIN MAJOLO, and HORST BECK
__________

Appeal 2010-008619
Application 11/384,184
Technology Center 1700
__________

Before TONI R. SCHEINER, FRANCISCO C. PRATS, and
STEPHEN WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a two-
component assembly adhesive and a process for preparing the adhesive. The
Patent Examiner rejected the claims as obvious. We have jurisdiction under
35 U.S.C. § 6(b). We reverse.

Appeal 2010-008619
Application 11/384,184

2
STATEMENT OF THE CASE
Claims 1-10 are on appeal. Claim 1 is representative and reads as
follows:
1. A two-component assembly adhesive comprising components A and
B, wherein component A comprises:
one or more water-soluble polysaccharides and/or polysaccharide
derivatives in a quality of 0.5% to 50% by weight, based on the total weight
of component A;
water; and
a compound dissociating in water which reduces the solubility in
water of at least one water-soluble polysaccharide and/or polysaccharide
derivatives present in component A;
and component B comprises:
water;
optionally a compound dissociating in water which reduces the
solubility in water of a water-soluble polysaccharide and/or polysaccharide
derivatives present in component A; and
optionally one or more water-soluble polysaccharide and/or
polysaccharide derivative;
wherein at least component A or component B comprises at least one
water-insoluble, water-dispersible synthetic polymerizate,
wherein the compound dissociating in water in component A has a
concentration high enough to reduce the solubility of at least one of the
water-soluble polysaccharides and/or polysaccharide derivatives present in
component A, and
wherein the compound dissociating in water in components A and B
being has a concentration so high overall in components A and B that the
solubility of at least one of the water-soluble polysaccharides and/or
polysaccharide derivatives present in component A after components A and
B have been combined is higher than in component A alone.

The Examiner rejected claims 1-10 under 35 U.S.C. § 103(a) as
unpatentable over Lewin1 and Ayambem.2

1 Patent Application Publication No. US 2003/0144405 A1 by Anke Lewin
et al., published Jul. 31, 2003.
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Application 11/384,184

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OBVIOUSNESS
The Issue
The Examiner’s position is that Lewin taught an aqueous assembly
adhesive having high initial strength comprising a dispersion of a copolymer
of styrene and an alkyl (meth)acrylate, an inorganic thickener, an organic
thickener in the form of an aqueous dispersion or solution of a copolymer of
acrylic acid and acrylamide, and water. (Ans. 3.) The Examiner found that
Lewin also disclosed a process for preparing the adhesive comprising
initially mixing all the constituents together, except the organic thickener,
which is added last with stirring. (Id.) Additionally, the Examiner found
that Lewin taught that organic thickeners include polyacrylates and cellulose
ethers. (Id.) The Examiner also found that Lewin taught that “in order to
impart high early strength to an adhesive, a high level of thickeners is often
added, which causes a considerable increase in the viscosity, making the
adhesive storage-unstable, difficult to apply, and having poor wetting
behavior.” (Id.)
However, the Examiner found that Lewin differed from the instantly
claimed invention because Lewin did not teach a “two-component” adhesive
and did not teach an adhesive containing cellulose, i.e., “a water-soluble
polysaccharide,” and a salt that reduces the solubility of the
cellulose/polysaccharide. (Id. at 4.)

2 Patent Application Publication No. US 2002/0195024 A1 by Amba
Ayambem et al., published Dec. 26, 2002.

Appeal 2010-008619
Application 11/384,184

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The Examiner found that Ayambem disclosed a pre-blend
composition for the preparation of a joint compound comprising water, a
water-soluble cellulose ether thickener, and a salt. (Id.) The Examiner also
found that Ayambem disclosed that a latex binder is added to the
composition to provide adhesive action. (Id.) Additionally, the Examiner
found that Ayambem taught that its composition was designed to have a
high concentration of cellulose thickener while having a pumpable viscosity
and good storage stability. (Id.) Further, the Examiner found that Ayambem
explained that the salt helped disperse the cellulose ether. (Id.)
The Examiner reasoned that a skilled artisan would have understood
from the prior art that by preparing two separate aqueous mixtures, one
containing an adhesive polymer dispersion, cellulosic thickener and a salt,
with the other containing mainly water and filler, the problem of viscosity
increase can be avoided while maintaining the thickening effect upon
combining the two mixtures. (Id. at 5.) Therefore, the Examiner found that
it would have been obvious for the skilled artisan at the time of the invention
to have modified Lewin’s adhesive by (a) replacing the acrylic acid-
acrylamide system with Ayambem’s cellulose ether/salt system, and (b)
preparing a second component containing water, filler, and inorganic
thickener to achieve a two-component assembly adhesive that was storage-
stable, easy to apply, and highly spreadable upon application. (Id.)
Appellants contend that the instant claims are not obvious over the
combined prior art because Lewin taught away from: (a) using cellulose
ethers as organic thickeners by teaching the use of non-cellulose ether
thickeners; and (b) preparing a two-component composition by teaching that
Appeal 2010-008619
Application 11/384,184

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its adhesive did not require mixing components or the use of special
equipment. (App. Br. 8-13.)
Additionally, Appellants assert that the Examiner has not provided
“proper motivation to modify the references as proposed in the rejection.”
(Id. at 16.) In particular, Appellants assert that the Examiner’s reasoning for
combining the references, i.e., “so that the resulting two-component
assembly adhesive is storage-stable, easy to apply and highly spreadable
upon application” would not have motivated an artisan to modify Lewin
because Lewin taught that its one-component composition already exhibited
these characteristics. (Id. at 15.)
Further, Appellants assert that the Examiner improperly relied on
Ayambem because it “is neither in the same field of endeavor as Appellants’
claims nor reasonably pertinent to the problems with which Appellants are
involved.” (Id. at 19.) According to Appellants, Ayambem disclosed
cementitious joint compounds that are not “assembly adhesives in
particular.” (Id.)
The issue with respect to this rejection is whether the Examiner
established that a skilled artisan at the time of the invention would have been
motivated to combine Lewin and Ayambem to arrive at the claimed
invention.
Findings of Fact
1. We agree with the Examiner’s explicit findings regarding the scope
and content of the prior art references (see Ans. 3-5), with the following
exception:
2. Lewin disclosed that its one-component composition addressed the
problems of storage instability and difficult application of prior art adhesives
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Application 11/384,184

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by providing a storable adhesive that would be easy to use. (Lewin [0017],
[0030].)

Principles of Law
It is well-established that a conclusion that the claimed subject matter
is prima facie obvious must be supported by evidence, as shown by some
objective teaching in the prior art or by knowledge generally available to one
of ordinary skill in the art that would have led that individual to combine the
relevant teachings of the references to arrive at the claimed invention. See
In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988).
A motivation to combine prior art teachings must be supported by an
articulated reasoning with rational underpinnings. In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006).

Analysis
We agree with Appellants that the Examiner has not articulated sound
reasoning describing why a skilled artisan at the time of the invention would
have been motivated to combine and modify Lewin and Ayambem to arrive
at the claimed invention. In particular, the Examiner has not established that
either reference taught or suggested the desirability or advantage of a two-
component assembly adhesive. Indeed, as Appellants have asserted, Lewin
instead taught the advantages of preparing a one-part adhesive composition,
i.e., that the composition did not require mixing before use and could be
dispensed from a cartridge without special equipment. (See App. Br. 14.)
Further, we find that the Examiner’s reasoning for combining the
teachings of the prior art was not supported by the evidence. See Fine, 837
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F.2d at 1074. Specifically, the Examiner stated that it would have been
obvious to a skilled artisan at the time of the invention to have modified
Lewin’s adhesive as proposed “so that the resulting two-component
assembly adhesive is storage-stable, easy to apply and highly spreadable
upon application….” (Ans. 5.) However, as the Appellants correctly
asserted (App. Br. 15) Lewin already disclosed that its one-component
assembly adhesive already had these attributes. (See FF-2.) Accordingly,
we find that the Examiner has not properly established motivation for the
proposed combination of prior art teachings. See Kahn, 441 F.3d at 988.

CONCLUSIONS OF LAW
The Examiner did not establish that a skilled artisan at the time of the
invention would have been motivated to combine Lewin and Ayambem to
arrive at the claimed invention.

SUMMARY
We reverse the rejection of claims 1-10 under 35 U.S.C. § 103(a) as
unpatentable over Lewin and Ayambem.

REVERSED

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