Ex Parte McGuire et al

Board of Patent Appeals and Interferences

Aug 31, 2009

11087345 (B.P.A.I. Aug. 31, 2009)

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