Ex Parte McGuire et alDownload PDFBoard of Patent Appeals and InterferencesAug 31, 200911087345 (B.P.A.I. Aug. 31, 2009) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte KENNETH STEPHEN MCGUIRE, MARY LEE AMIRPOUR, URMISH POPATLAL DALAL, FRED NAVAL DESAI, CHARLES BRUCE LAMBERT, and DAVID RICHARD TUCKER ____________ Appeal 2009-004251 Application 11/087,345 Technology Center 1700 ____________ Decided: August 31, 2009 ____________ Before BRADLEY R. GARRIS, ADRIENE LEPIANE HANLON, and BEVERLY A. FRANKLIN, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134 from the Examiner's rejection of claims 1-7, 10, and 11. We have jurisdiction under 35 U.S.C. § 6(b). Appeal 2009-004251 Application 11/087,345 2 STATEMENT OF THE CASE Claim 1 is representative of the subject matter on appeal and is set forth below: 1. A process of manufacturing a stretch composite, said method comprising the steps of: a) providing a first substrate, said substrate moving in a machine direction, wherein said substrate has opposing first and second surfaces; b) providing a letterpress adhesive application system, said letterpress adhesive application system comprising a pattern roll and an applicator roll, each of said rolls having an exterior surface with a roll surface temperature, a portion of said exterior surface of said pattern roll comprising a predetermined pattern of raised surface elements; c) depositing a molten, non-adhesive, elastomeric composition onto the exterior surface of said applicator roll, said composition having an application temperature, said application temperature being greater than said pattern roll surface temperature and a peel force of less than about 3 N/cm; d) transferring a portion of said composition from said applicator roll to a distal surface of said raised elements so as to surface coat said raised elements wherein said composition cohesively fails such that a portion of said composition also remains on said applicator roll; and e) cooling said transferred portion to a temperature between said application temperature and said pattern roll surface temperature causing a cohesive strength of said composition to increase such that said cohesive strength is greater than said peel force; and f) contacting said first surface of said substrate and said surface coated raised elements and substantially completely transferring Appeal 2009-004251 Application 11/087,345 3 said elastomeric composition from said distal surface of said raised surface elements to said first surface. THE REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Worns 4,686,172 Aug. 11, 1987 Miller 5,468,237 Nov. 21, 1995 Meissner DE 195 16 037 A1 Nov. 7, 1996 (as translated) Tokkoh JP 10-53963 Feb. 24, 1998 (as translated) Morman 5,910,224 Jun. 8, 1999 Buell 6,476,289 B1 Nov. 5, 2002 Lender 6,531,027 B1 Mar. 11, 2003 THE REJECTION(S) 1. Claims 1, 3, and 4 are rejected under 35 USC § 103(a) over Tokkoh in view of Meissner. 2. Claim 2 is rejected under 35 USC § 103(a) over Tokkoh in view of Meissner, and further in view of Lender. 3. Claims 5 and 7 are rejected under 35 USC § 103(a) over Tokkoh in view of Meissner and further in view of Worns. 4. Claim 6 is rejected under 35 USC § 103(a) over Tokkoh in view of Meissner, and further in view of Miller. Appeal 2009-004251 Application 11/087,345 4 5. Claim 10 is rejected under 35 USC § 103(a) over Tokkoh in view of Meissner and further in view of Morman. 6. Claim 11 is rejected under 35 USC § 103(a) over Tokkoh in view of Meissner and further in view of Buell. ISSUE Have Appellants shown reversible error in the Examiner’s determination of obviousness by showing that there is no reasonable expectation of success in using the non-adhesive composition of Tokkoh in the method of applying adhesives according to Meissner? PRINCIPLES OF LAW The rationale to support a conclusion that the claim would have been obvious is that "a person of ordinary skill in the art would have been motivated to combine the prior art to achieve the claimed invention and whether there would have been a reasonable expectation of success." DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1360 (Fed. Cir. 2006). A rationale to support a conclusion that a claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded nothing more than predictable results to one of ordinary skill in the art. KSR International Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007); Sakraida v. AG Pro, Inc., 425 U.S. 273, 282 (1976); Anderson’s-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 62-63, Appeal 2009-004251 Application 11/087,345 5 (1969); Great Atlantic & Pac. Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 152 (1950). ANALYSIS As an initial matter, we focus on claim 1, as the dependent claims fall with claim 1. Appellants argue that Tokkoh is directed to non-adhesive compositions while Meissner is drawn to methods of applying adhesives. Appellants argue that therefore there is no reasonable expectation of success for the combination of the non-adhesives of Tokkoh and the method of applying adhesives according to Meissner. Br. 8. The Examiner asserts that the hot-melt rubber of Tokkoh is in the same class of hot-melt adhesives of Meissner. Meissner teaches that the adhesive is a “hot-melt adhesive”. Meissner, p. 3, third para. No specific examples of hot-melt adhesives are disclosed in Meissner. Tokkoh teaches a hot-melt rubber. Tokkoh, para. [0009]. Tokkoh teaches specific examples of an elastic rubber made of polyurethane or other synthetic rubber. Tokkoh, para. [0010]. The Examiner has not explained how these facts support his statement that the hot-melt rubber of Tokkoh is in the same class of the hot- melt adhesives disclosed in Meissner. Hence, the rationale upon which the Examiner concludes that “the same class of compounds is expected to perform in the same manner on an identical apparatus” is unsupported by the record. As such, we agree with Appellants that a reasonable expectation of success has not been demonstrated by the Examiner. DyStar Textilfarben GmbH & Co. Deutschland KG, 464 F.3d at 1360. In other words, predictability has not been demonstrated from the facts in this case. KSR International Co. v. Teleflex Inc., 550 U.S. at, 416-17; Sakraida v. AG Pro, Appeal 2009-004251 Application 11/087,345 6 Inc., 425 U.S. at 282; Anderson’s-Black Rock, Inc., 396 U.S. at 62-63; Great Atlantic & Pac. Tea Co., 340 U.S. at 152. CONCLUSIONS OF LAW Appellants have shown reversible error in the Examiner’s determination of obviousness by showing that there is no reasonable expectation of success in using the non-adhesive composition of Tokkoh in the method of applying adhesives according to Meissner. DECISION Each rejection is reversed. 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)(v). REVERSED kmm THE PROCTER & GAMBLE COMPANY Global Legal Department - IP Sycamore Building - 4th Floor 299 East Sixth Street Cincinnati, OH 45202 Copy with citationCopy as parenthetical citation