Ex Parte Misiak

Board of Patent Appeals and Interferences

Apr 5, 2007

11001244 (B.P.A.I. Apr. 5, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HANNS ROLAND MISIAK
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Appeal 2007-1174
Application 11/001,244
Technology Center 1700
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Decided: April 5, 2007
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Before CHARLES F. WARREN, THOMAS A. WALTZ, and PETER F.
KRATZ, Administrative Patent Judges.

WALTZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal from the Primary Examiner’s refusal to
allow claims 1-11, the only claims pending in this application, as amended
subsequent to the Final Rejection (see the Amendments dated Feb. 14, 2006,
and Apr. 13, 2006, entered as per the Advisory Actions dated Mar. 3, 2006,
and Apr. 21, 2006, respectively; Br. 3). We have jurisdiction pursuant to 35
U.S.C. §§ 6 and 134.
Appeal 2007-1174
Application 11/001244

According to Appellant, the invention is directed to a cyanoacrylate
adhesive composition with enhanced peel strength, where the composition
includes a cyanoacrylate component and a toughening agent comprising
poly(vinylidene chloride-co-acrylonitrile) in combination with fumed silica
(Br. 3). Independent claims 1 and 9 are illustrative of the invention and are
reproduced below:
1. A toughened cyanoacrylate composition consisting essentially of:
a. a cyanoacrylate component; and
b. polyvinyliene-chloride-co-acrylonitrile); and
c. fumed silica, wherein the fixturing time of the cyanoacrylate
composition between two substrates is less than about 70 seconds.

9. A cyanoacrylate composition consisting essentially of:
a. a cyanoacrylate component;
b. poly(vinylidene-chloride-co-acrylonitrile);
c. fumed silica; and
d. one or more additives selected from the group consisting of
stabilizers, accelerators, plasticizers, fillers other than fumed silica,
opacifiers, thickeners, viscosity modifiers, inhibibors, thixotrophy conferring
agents other than fumed silica, dyes, thermal degradation reducers, and
combinations thereof,

wherein upon cure, the cyanoacrylate composition has an average tensile
shear strength in excess of about 1.0 N/mm.

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Application 11/001244

The Examiner has relied upon the following references as evidence of
obviousness:
Gleave US 4,102,945 Jul. 25, 1978
Koga US 4,713,405 Dec. 15, 1987
Nishino US 5,739,205 Apr. 14, 1998
O’Connor US 6,475,331 B1 Nov. 05, 2002

ISSUES ON APPEAL
Claims 1-8 stand rejected under 35 U.S.C. § 112, first paragraph, for
failure to provide enablement for the scope of the claims (Answer 3).1
Claims 1-11 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Nishino in view of Gleave, O’Connor, and Koga (Answer 3).
Appellant contends that only routine, not undue, experimentation is
needed to determine if the fixture time between any two substrates is within
the scope of the claims (less than about 70 seconds) (Br. 7).
Appellant contends that the claimed language “consisting essentially
of” eliminates the need for an accelerator while all of the applied prior art
includes an accelerator (Br. 10-12 and 15; Reply Br. 2-4).
Appellant contends that Nishino teaches that difficulties are
encountered if the specific disclosed thickeners are not used, and thus there
is no motivation to substitute the thickener of Gleave (Br. 14).
Appellant contends that unexpected results have been shown (Br. 16-
17).

1 We refer to and cite from the Examiner’s Answer dated Nov. 2, 2006. We
note that the rejection of claims 1-8 under the first paragraph of 35 U.S.C. §
112 for lack of written description has been withdrawn by the Examiner
(Answer 2, ¶ (6)).
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Application 11/001244

The Examiner contends that O’Connor shows that the fixturing time
of the adhesive composition depends on the type of substrates, and
Appellant’s Specification does not reasonably provide enablement for the
fixturing time of the adhesive composition used between any two substrates
(Answer 3).
The Examiner contends that Gleave teaches the improved benefits of
using a vinylidene chloride-acrylonitrile (VAC) thickener in place of the
conventional poly(methylmethacrylate) (PMM) thickener (Answer 4 and 8-
9).
The Examiner contends that the claimed language “consisting
essentially of” does not exclude the accelerators of the applied prior art
references since Appellant has not shown that accelerators materially affect
the basic and novel characteristics of the claimed invention (Answer 8).
Accordingly, the issues presented in this appeal are as follows: (1)
would undue experimentation be required to practice the invention as
claimed?; (2) does the claimed language “consisting essentially of” exclude
the accelerators required by the applied prior art references?; (3) has a
motivation, reason, or suggestion been established for substituting the
thickener of Gleave for the thickener of Nishino?; and (4) does Appellant
show unexpected results sufficient to rebut any prima facie case of
obviousness?
We determine that the Examiner has not established that the
Specification disclosure requires undue experimentation to practice the
invention as claimed. Therefore, we REVERSE the rejection based on the
first paragraph of § 112, essentially for the reasons stated in the Brief and
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Application 11/001244

those set forth below. We also determine that the Examiner has established
a prima facie case of obviousness in view of the reference evidence, which
case has not been adequately rebutted by Appellant’s arguments and
evidence. Therefore, we AFFIRM the rejection based on § 103(a)
essentially for the reasons stated in the Answer, as well as those reasons set
forth below. Accordingly, the decision of the Examiner to reject the claims
on appeal is AFFIRMED.
OPINION
A. The Rejection under § 112, first paragraph
We determine the following factual findings from the record in this
appeal:
(1) some of the claims require that the “fixturing time of the
cyanoacrylate composition between two substrates is less than
about 70 seconds” (see claim 1 on appeal reproduced above);
(2) original claim 13 provides a literal basis for this requirement in
claim 1 on appeal (Br. 9);
(3) examples of substrates bonded with Appellant’s adhesive
composition include EPDM rubber and steel (Specification 11:16-
19; 12:11-19; 13, Table 1; and 14:1-7; Br. 6; and Answer 3, 5-6);
and
(4) O’Connor discloses cyanoacrylate adhesive compositions with
various fixture times for different substrates (col. 5, Table 2).
Whether a specification is enabling is a legal conclusion based upon
several underlying factual inquiries. See In re Wands, 858 F.2d 731, 735-37,
8 USPQ2d 1400, 1400-04 (Fed. Cir. 1988). The initial burden of
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Application 11/001244

establishing lack of enabling disclosure, such as by showing undue
experimentation, rests with the Examiner. See In re Wright, 999 F.2d 1557,
1561, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993). Some routine
experimentation is permissible to practice the invention as claimed as long
as the experimentation is not “unduly extensive.” See Hybritech, Inc. v.
Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384, 231 USPQ 81, 94 (Fed.
Cir. 1986).
Applying the preceding legal principles to the factual findings in the
record of this appeal, we determine that the Examiner has not met the initial
burden of establishing a lack of enabling disclosure. It is not necessary that
a patent applicant test all the embodiments of the invention. See In re
Angstadt, 537 F.2d 498, 502, 190 USPQ 214, 218 (CCPA 1976). The
Examiner has not established what experimentation would have been
necessary to practice the invention as claimed, much less that this
experimentation would have been “undue.” See Wands, supra. Merely
because the prior art shows different fixturing times for different types of
substrates does not constitute undue experimentation or lack of enabling
disclosure. Therefore, we determine that the Examiner has not met the
initial burden of establishing that the Specification disclosure lacks
enablement. Accordingly, we cannot sustain the rejection of claims 1-8
under the first paragraph of 35 U.S.C. § 112.
B. The Rejection based on § 103(a)
We determine the following factual findings from the record in this
appeal:
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Application 11/001244

(1) Nishino teaches that polymer thickeners were known to be
blended with cyanoacrylate adhesives in order to increase
the viscosity, and ultrafine anhydrous silica was blended
with cyanoacrylate adhesives in order to give high
thixotropy and improve flowability and penetration (col. 1,
ll. 20-23 and 31-34);
(2) Nishino discloses that prior art adhesive compositions
included cyanoacrylate, poly(methylmethacrylate) (PMM)
as a thickener, a quick-curing additive, and fumed silica
(col. 1, ll. 44-50, citing US 4,845,151);
(3) Nishino discloses an adhesive composition comprising a
cyanoacrylate, a specific amount of PMM with an average
molecular weight of from 100,000 to 300,000, a specific
amount of a quick-curing agent represented by formula (1),
and an ultrafine anhydrous silica (col. 3, l. 38-col. 4, l. 29;
Answer 3-4);
(4) Nishino teaches that “[o]ne or more of other known various
thickeners which are used in combination with the
cyanoacrylate may be used” (col. 4, ll. 44-49);
(5) Nishino teaches that various difficulties are encountered
when thickeners are used which do not meet the
requirements of the invention with respect to the weight
average molecular weight and the amount (col. 3, ll. 26-30);
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Application 11/001244

(6) Nishino discloses examples where the fixturing times (set
times) for the adhesive compositions are 20, 40, and 50
seconds (Examples 1-3; Answer 4);
(7) Gleave discloses an adhesive composition of a
cyanoacrylate with a VAC thickener, which thickener gives
improved peel strength over the conventional PMM
thickener, with the selection of molecular weight well
within the skill of the art (col. 1, ll. 7-9, 55-68; col. 3, ll. 40-
47; and col. 4, ll. 3-6, 58-62; Answer 4);
(8) O’Connor teaches the well known use of fumed silica as a
thixotropic agent and PMM as a thickener in cyanoacrylate
adhesive compositions, as well as the amounts necessary to
achieve these functions (col. 3, ll. 50-63);
(9) O’Connor teaches the use of various accelerating agents to
produce fixture times of less than 30 seconds, depending on
the substrates (col. 4, ll. 11-13; Example 4 in Table 1; and
Table 2);
(10) Koga teaches that additives known as Aerosil R200 and
R972 are fumed silicas (Table 1; Answer 4).
Implicit in our review of the Examiner’s obviousness analysis is that
the claim must first have been correctly construed to define the scope and
meaning of each contested limitation. See Gechter v. Davidson, 116 F.3d
1454, 1457, 1460 n.3, 43 USPQ2d 1030, 1032, 1035 n.3 (Fed. Cir. 1994).
The transition phrase “consisting essentially of” has a settled meaning in
patent jurisprudence and opens the claim to the inclusion of any component
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Application 11/001244

that does not materially affect the basic and novel characteristics of the
claimed invention. See In re Herz, 537 F.2d 549, 551-52, 190 USPQ 461,
463 (CCPA 1976). However, the term “consisting essentially of” does not
necessarily limit the claims to exclude certain materials when the
specification clearly indicates that these same materials may be present. See
Herz, supra; Ex parte Boukidis, 154 USPQ 444 (Bd. Pat. App. 1966). When
relying on numerous references, it is incumbent upon the Examiner to
identify some suggestion or motivation to combine the references as
proposed. See In re Mayne, 104 F.3d 1339, 1342, 41 USPQ2d 1451, 1454
(Fed. Cir. 1997).
Applying the preceding legal principles to the factual findings in the
record of this appeal, we determine that the claimed phrase “consisting
essentially of” does not exclude accelerators since Appellant’s Specification
and Claims clearly include accelerators in the adhesive compositions of the
invention (see claims 7 and 9 on appeal; Specification 3:15, 6:2, and 7:3-
9:11). See Herz, supra. Therefore, accelerators would not have affected the
basic and novel characteristics of the claimed adhesive compositions (note
that claim 9 on appeal recites a desired tensile shear strength, not a fixturing
time). It appears that the “basic and novel characteristic” of the claimed
composition is the “improved peel strengths” (Specification 1:13-14).
Accordingly, we determine that the accelerators disclosed in the applied
prior art are not excluded from the claims on appeal.

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Appeal 2007-1174
Application 11/001244

Applying the preceding legal principles to the factual findings in the
record of this appeal, we determine that the Examiner has established a
prima facie case of obviousness in view of the reference evidence. As
shown by factual findings (1) through (3), (6) and (10) listed above, we
determine that adhesive compositions of a cyanoacrylate component, PMM
thickener, and fumed silica, with fixturing times of less than about 70
seconds, are disclosed by Nishino. We determine that the only difference
between the claimed subject matter and the disclosure of Nishino is the
particular thickener employed (Answer 4). We also determine that Gleave
teaches the improved results achieved by using VAC thickeners in place of
conventional PMM thickeners in cyanoacrylate adhesive compositions (see
factual finding (7) listed above). Therefore, we determine that the Examiner
has established sufficient motivation to modify the adhesive composition of
Nishino.
We note that Nishino teaches that difficulties are encountered if the
specific molecular weight and amount of PMM are not used (see factual
finding (5) listed above). However, as taught by Gleave, the molecular
weight of the thickener will affect solubility and thickening ability, but one
of ordinary skill in this art would have routinely been able to select the
appropriate molecular weight to achieve the desired properties (see factual
finding (7) listed above). Similarly, the amount of thickener would affect
the viscosity and flowability of the adhesive composition, but such amounts
would have been well within the ordinary skill in the art (see factual finding

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Application 11/001244

(8) listed above). Therefore, we determine that one of ordinary skill in this
art would have been motivated to substitute the VAC thickener of Gleave for
the conventional PMM of Nishino with the expectation of beneficial results,
and with the ordinary skill to modify the molecular weight and amount to
achieve the desired thickening properties. Additionally, we determine that
one of ordinary skill in this art would also have been led to use the improved
thickener (VAC) of Gleave in combination with the PMM thickener
disclosed by Nishino, rather than as a substitute (see factual finding (4) listed
above).
For the foregoing reasons and those stated in the Answer, we
determine that the Examiner has established a prima facie case of
obviousness in view of the reference evidence. Appellant has argued that
unexpected results have been demonstrated (Br. 16-17). Therefore, we
begin anew and consider the evidence for and against obviousness.
See In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992).
We do not find Appellant’s evidence persuasive for the following
reasons. Expected beneficial results are evidence of obviousness, just as
unexpected beneficial results are evidence of unobviousness. See In re
Skoll, 523 F.2d 1392, 1397, 187 USPQ 481, 484 (CCPA 1975); In re
Skoner, 517 F.2d 947, 950, 186 USPQ 80, 82 (CCPA 1975). Here Gleave
teaches that improved results will occur by substituting the VAC thickener
for a conventional PMM thickener (see factual finding (7) listed above).
Additionally, Appellant’s evidence of nonobviousness that is not

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Application 11/001244

commensurate in scope with its claims cannot overcome the rejection of
those claims. See In re Boesch, 617 F.2d 272, 276, 205 USPQ 215, 219
(CCPA 1980); In re Payne, 606 F.2d 303, 315-16, 203 USPQ 245, 256
(CCPA 1979). The examples listed in the Table on page 13 of the
Specification are limited to specific cyanoacrylates (e.g.,
ethylcyanoacrylate), specific copolymers of vinylidene chloride and
acrylonitrile (e.g., PVeneCAN), and other specific additives (e.g., PMM and
accelerators) in specific amounts, whereas the claims are not so limited.
Furthermore, Appellant has not explained why these examples are
considered to be the closest prior art. See In re Burckel, 592 F.2d 1175,
1179, 201 USPQ 67, 71 (CCPA 1979). Finally, Appellant has not explained
why these results are considered “unexpected.” See Example 6 compared
with Example 13 in the Table on page 13 of the Specification, where the
addition of 3% silica reduces the peel strength of the adhesive composition
from 3.3 to 3.2 N/mm.
Based on the totality of the record, including due consideration of
Appellant’s arguments and evidence, we determine that the preponderance
of evidence weighs most heavily in favor of obviousness within the meaning
of § 103(a). Therefore, we affirm the rejection of claims 1-11 under
§ 103(a) over Nishino in view of Gleave, O’Connor, and Koga.

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Application 11/001244

C. Time Period for Response
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)(iv)(2006).
AFFIRMED

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