Ex Parte Lunsford et al

Board of Patent Appeals and Interferences

Nov 13, 2009

10689172 (B.P.A.I. Nov. 13, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DUANE A. LUNSFORD and JIMMIE RAE BARAN, JR.
____________

Appeal 2009-009374
Application 10/689,172
Technology Center 1700
____________

Decided: November 13, 2009
____________

Before EDWARD C. KIMLIN, CHARLES F. WARREN, and
PETER F. KRATZ, Administrative Patent Judges.
KRATZ, 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 1-11 and 29-37. We have jurisdiction
pursuant to 35 U.S.C. § 6.

Appeal 2009-009374
Application 10/689,172

2
Appellants acknowledge the existence of numerous known methods
for forming an adhesive article that include treating a substrate surface to
increase adherence of adhesive thereto, such as a method that includes
interposing an adhesion promoting primer layer (Spec. 1). Also, Appellants
identify several conventional adhesives, such as silicone pressure sensitive
adhesives, that do not include greater than three weight percent acrylic acid
repeat units (Spec. 1, 10, and 11).
Appellants’ claimed invention is directed to such an adhesive article
including a substrate, a primer and an adhesive, as well as a method for
preparing the article. Appellants’ article includes a primer layer that consists
essentially of nanoparticles, which layer is interposed between an adhesive
layer and a substrate surface.1
Claim 1 is illustrative and reproduced below:
An adhesive article comprising:

(a) a first substrate comprising a first major surface;

(b) a first adhesive layer, wherein the first adhesive layer
comprises no more than 3% by weight acrylic acid repeat units;
and

(c) a first primer layer interposed between at least a
portion of the first major surface of the substrate and at least a
portion of the first adhesive layer, wherein the first primer
consists essentially of nanoparticles.

1 Appellants employ the term “consists essentially of” to mean “free of an
effective amount of a component that reacts with the adhesive or the
substrate (i.e., ambifunctional silane), and/or any polymeric binders that act
to increase the adhesion of the adhesive to the substrate” (Spec. 11).
Appeal 2009-009374
Application 10/689,172

3
The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:

Lange US 4,816,333 Mar. 28, 1989
Melancon US 2003/0152768 A1 Aug. 14, 2003

Appellants furnish a Declaration of Robert G. Murray and a copy of
published European Patent Specification No. 0 372 756 (Strobel) as further
evidence to be weighed in considering the obviousness question before us.
The Examiner maintains the following grounds of rejection:
Claims 1-11 and 29-37 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Lange, taken alone, or with respect to claims 6 and
32, further in view of Melancon.
We affirm.
Appellants argue the rejected claims as a group and do not present
reasonably specific arguments directed to the separate patentability of any of
the appealed claims (see generally App. Br.). 2 The Examiner refers to the
additional teachings of Melancon in rejecting dependent claims 6 and 32;
however, Appellants do not disagree with the Examiner’s application of
Melancon to the latter claims for showing that silicon polyurea based
adhesives are known (App. Br. 9). Thus, while dependent claims 6 and 32
are briefly discussed under a separate argument heading; no arguments
directed to the separate patentability of these claims and/or the Examiner’s
application of the additional teachings of Melancon thereto are furnished

2 We refer to the Amended Brief on Appeal filed June 05, 2007 as the
Appeal Brief (App. Br.). Our references to the Reply Brief (Reply Br.)
herein are to the Reply Brief to the Supplemental Examiner’s Answer Under
37 C.F.R. § 41.43(b) filed September 17, 2007.
Appeal 2009-009374
Application 10/689,172

4
(App. Br. 6-9). Accordingly, we select claim 1 as a representative claim on
which we focus in deciding this appeal.
Appellants do not dispute the Examiner’s determination that Lange
discloses a substrate having a surface coated with a layer of nano-size silica
particles (see generally App. Br.; Ans. 3; Lange col. 3, ll. 20-24).
The Examiner has determined that Lange “is totally silent with respect
to the presence of ambifunctional silanes” and that Strobel (EP ‘756) does
not refer to Lange (Supp Ans. 3). Appellants do not specifically contest
these determinations by the Examiner (see generally Reply Br.)
In discussing the disclosed silica coating’s adherence to a substrate,
Lange describes a test performed with a strip of Scotch Brand Magic
transparent tape (available from 3M Company) being applied to and stripped
from the coated substrate (col. 3, l. 60–col. 4, l. 4).
Lange teaches that “[t]he excellent adhesion of the coating to the
substrate and the adhesive of the test tape also demonstrates the utility of the
coating as a primer for adhering adhesives to substrates, such as polymeric
substrates, e.g., polyester films” (col. 4, ll. 5-9).
Based on the aforementioned teachings of Lange and the additional
teachings as referred to by the Examiner in the Answer, the Examiner, in
essence, maintains that Lange would have reasonably led one of ordinary
skill in the art to an article including a substrate, a nano-particle primer layer
and an adhesive layer, including a workable prior art adhesive, that falls
within the scope of representative claim 1 (Ans. 3-5).
Appellants’ arguments opposing the Examiner’s stated obviousness
rejections rely on the Declaration of Robert G. Murray (Decl., Item No. 4)
for establishing that “[f]rom at least 1969 until the present, the adhesive used
Appeal 2009-009374
Application 10/689,172

5
with 3M’s Scotch Brand Magic transparent tape contained greater than 3%
by weight acrylic acid”. In addition, Appellants rely on a European Patent
(EP) Publication EP 0 372 756), as evidence, in support of a “teaching
away” argument (Br. 7-9). The EP Publication (EP ‘756) was previously
utilized by the Examiner in rejecting Appellants’ claims. See Final Office
Action (FOA 2-3).
Appellants essentially assert that Lange, at best, may have sparked the
interest of a scientist or an ordinarily skilled artisan to try forming articles
with adhesive layers over a nano-primed substrate using an adhesive other
than the exemplified Scotch Brand Magic transparent tape adhesive, but
Lange would not have led one of ordinary skill in the art to an article
including a nano-particle primer and an adhesive layer, as claimed (App. Br.
6-7). Also, Appellants urge that the prior art as a whole would have directed
one of ordinary skill in the art toward an article that would have included
ambifunctional silane in the nano-particle containing primer layer, as taught
by Strobel (App. Br. 7-8). According to Appellants, the inclusion of
ambifunctional silane is excluded from the scope of representative claim 1
given the “consists essentially of” language and the restrictive meaning
thereof set forth by Appellants in the Specification (App. Br. 8).
Accordingly, it is Appellants’ view that one of ordinary skill in the art would
not have been directed to the claimed subject matter based on the prior art
teachings of record with a reasonable expectation of success but rather
toward the use of a silane-containing nano-particle primer layer as taught by
Strobel (App. Br. 9).
The issues before us are: have Appellants established reversible error
in the Examiner’s obviousness rejections based on the aforementioned (1)
Appeal 2009-009374
Application 10/689,172

6
obvious to try argument; (2) teaching away contention; and/or (3) lack of a
reasonable expectation of success assertion?
DISCUSSION/CONCLUSION
We answer these questions in the negative and we affirm the
Examiner’s rejections.
At the outset, we note our agreement with Appellants’ position that
the Examiner has not effectively refuted the factual assertion of Roger G.
Murray (Declaration under 37 C.F.R. § 1.132) concerning the acrylic acid
content of 3 M’s Scotch Brand Magic transparent tape (Decl., Item no. 4;
Reply Br. 5; Supp. Ans. 4; Ans. 3-4). However, as correctly noted and
suggested by the Examiner, one of ordinary skill in the art would not have
considered Lange’s teaching of an article with a nano-particle primer and an
adhesive layer to be limited to the use of an adhesive layer that can only
include adhesive corresponding to the tape adhesive of Lange’s Examples
(Ans. 3-5; Supp. Ans. 4)). Thus, the Examiner’s failure to credit the
Declaration evidence does not rise to reversible error. In this regard, Lange
used 3 M’s Scotch Brand Magic transparent tape to test the adherence of a
nano-particle primer layer to a substrate in Examples 1 and 2, not to limit the
type of adhesives that the primer coating layer can bind to a substrate via the
interposition of the primer between the substrate and an adhesive layer (col.
4, ll. 5-9, col. 6, l. 18- col. 7, l. 33).
Appellants have not persuasively articulated why one of ordinary skill
in the art would have found Lange’s teachings insufficient to select a
conventional adhesive other than an adhesive having more than 3 weight
percent acrylic acid repeat units, the only type of adhesive argued to be
Appeal 2009-009374
Application 10/689,172

7
excluded by representative claim 1.3 In an obviousness assessment, skill is
presumed on the part of the artisan, rather than the lack thereof. In re
Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985).
Moreover, Appellants’ contentions with respect to Strobel teaching
away from the claimed subject matter by requiring an ambifunctional silane
in a primer layer misses the mark because Appellants’ representative claim 1
does not require a particular adhesive strength or adhesive failure mode, as
addressed by Strobel (Strobel, p. 6, l. 55 – p. 7, l. 2). Also, Lange does not
require an ambifunctional silane additive for the nano-particle layer (see
generally Lange). While we agree with Appellants that the additional
teachings of Strobel, as supplied by Appellants with the Appeal Brief, must
be considered in assessing the obviousness of the claimed subject matter
over the applied prior art, Appellants have the burden to persuasively
explain how the use of ambifunctional silane in a nano-particle primer layer,
as argued to be required by Strobel, would have dissuaded one of ordinary
skill in the art from following the alternative option suggested by Lange; that
is, forming a nano-particle priming layer for conventional adhesives that
does not include ambifunctional silane (Lange; col. 4, ll. 5-9). Here,
Appellants have not done so by referring to Examples 1-4 and several
passages of Strobel (App. Br. 8).
In particular, Appellants do not contest the Examiner’s determinations
that Lange “is totally silent with respect to the presence of ambifunctional
silanes” and that Strobel (EP ‘756) does not refer to Lange (Supp Ans. 3;

3 On appeal to this Board, Appellants must show that the Examiner
erred in rejecting the claims. Cf. In re Kahn, 441 F.3d 977, 985-86 (Fed.
Cir. 2006); see also 37 C.F.R. § 41.37(c)(1)(vii).
Appeal 2009-009374
Application 10/689,172

8
see generally Reply Br.). After all, “[t]he prior art’s mere disclosure of
more than one alternative does not constitute a teaching away from any of
these alternatives because such disclosure does not criticize, discredit, or
otherwise discourage the solution claimed in the . . . application.”
Moreover, Appellants’ partial syllogism and “hasty generalization”
fallacy argument set forth in the reply Brief is not persuasive. This is
because the Examiner’s rejection is not premised solely on Lange’s
Examples, as the partial syllogism erroneously hints at being the case; but
also on the additional disclosure of Lange suggesting that the primer would
be reasonably expected to work for other adhesives, as discussed above and
in the Examiner’s Answer (Reply Br. 4; Ans. 3-4).
Further concerning Appellants’ obvious to try and lack of reasonable
expectation of success assertions, we note that the Supreme Court has
instructed that although the teaching, suggestion, and motivation test
“captured a helpful insight,” an obviousness analysis “need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR Int'l. Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007). In this regard, Appellants have not
demonstrated that arrival at the claimed subject matter would have been
unexpected to one of ordinary skill in the art and/or would have required
“more than the predictable use of prior art elements according to their
established functions.” KSR, 550 U.S. at 417.
On this record, we are not persuaded of reversible error in the
Examiner’s obviousness determinations.

Appeal 2009-009374
Application 10/689,172

9
ORDER
The Examiner’s decision to reject the appealed claims is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR § 1.136(a)(1)(iv).

AFFIRMED

kmm

3M INNOVATIVE PROPERTIES COMPANY
P.O. BOX 33427
ST. PAUL, MN 55133-3427