09156886 (B.P.A.I. Apr. 13, 2009)

Ex Parte Mussig

Board of Patent Appeals and InterferencesApr 13, 2009

09156886 (B.P.A.I. Apr. 13, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte BERNHARD MUSSIG ____________________ Appeal 2009-2603 Application 09/156,886 U.S. Patent Publication 2001/0004494 Technology Center 1700 ____________________ Decided1: April 14, 2009 ____________________ Before: FRED E. McKELVEY, Senior Administrative Patent Judge, and RICHARD E. SCHAFER and RICHARD TORCZON, Administrative Patent Judges. McKELVEY, Senior Administrative Patent Judge. DECISION ON APPEAL 1 A. Statement of the case 2 Mussig and the real party in interest (tesa AGâ€”formerly Beirsdorf 3 AG) (Mussig), seek review under 35 U.S.C. Â§ 134(a) of a final rejection 4 (mailed 18 March 2005). 5 Claim 37-55 are in the application. 6 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. Â§ 1.304, begins to run from the decided date shown on this page of the decision. The time period does not run from the Mail Date (paper delivery) or Notification Date (electronic delivery). Appeal 2009-2603 Application 09/156,886 2 The Examiner relies on the following prior art: 1 Dobashi 5,643,676 1 Jul 1997 Koga EP 0 661 364 A2 7 May 1995 2 We have jurisdiction under 35 U.S.C. Â§ 134(a). 3 4 B. Discussion 5 Claims 37-55 are on appeal. 6 Claim 37 is an independent claim. 7 Claims 38-55 are dependent claims. 8 Claim 37, reproduced from the Claims Appendix of the Corrected 9 Appeal Brief (filed 12 Dec. 2006), reads [bracketed matter, italics and some 10 indentation added]: 11 A method 12 [1] for protecting the paint finish of a vehicle or 13 [2] for protecting a painted vehicle component 14 against soiling and damage during assembly, transportation or 15 storage, 16 said method comprising applying to said vehicle or 17 vehicle component a self-adhesive protective film, 18 said self-adhesive protective film comprising: 19 a) a backing film; and 20 b) an adhesive composition coated on said backing film, 21 Appeal 2009-2603 Application 09/156,886 3 wherein the adhesive composition comprises [1] a 1 copolymer of at least two different Î±-olefins having 2 to 12 2 carbon atoms and [2] at least one further comonomer, 3 said further comonomer being a diene, 4 said adhesive composition not containing 75 mol-% or 5 more of any single Î±-olefin, 6 the copolymer having a Mooney viscosity ML (1+4) 125 7 ÂºC of less than 50. 8 The rejection is based on the combined disclosures of Koga and 9 Dobashi. 10 One element of the claimed method is the use of an adhesive 11 composition comprising [1] a copolymer of at least two different Î±-olefins 12 having 2 to 12 carbon atoms and [2] at least one further comonomer, said 13 further comonomer being a diene. 14 Mussig maintains (Reply Brief, page 2), and we agree, that Koga does 15 not describe a composition having a copolymer wherein at least one further 16 comonomer is a diene. The Examiner does not rely on Dobashi for a 17 teaching of the further comonomer. 18 Suitable dienes are those common for the preparation of EPDM 19 rubber, examples being (1) 1,4-hexadiene, (2) dicyclopentadiene or, in 20 particular, (3) 5-ethylidene-2-norbornene (ENB). The proportion of diene in 21 the polymer is preferably between 0.5 and 10% by weight. Specification, 22 page 2:14-18. 23 Appeal 2009-2603 Application 09/156,886 4 What Koga describes is an adhesive comprising a mixture of (1) a 1 copolymer of various Î±-olefins and (2) certain polymers made inter alia 2 from butadieneâ€”which is a diene. 3 After considering Koga as a whole, including the portions of Koga 4 cited in the Examiner's Answer, insofar as we can tell nothing in Koga 5 describes a copolymer made from two Î±-olefins monomers and a diene 6 monomer. 7 An essential element of claim 37 being missing from the prior art 8 relied upon by the Examiner, renders the Examiner's obviousness holding 9 unsupported factually by the evidence. 10 Claims 38-55 are dependent directly or indirectly on independent 11 claim 37. If broad claim 37 is not unpatentable over prior art relied upon by 12 the Examiner, then narrower claims 38-55 likewise cannot be unpatentable 13 over that prior art. 14 Our rationale for reversal makes it unnecessary to consider the 15 "evidence" offered by Mussig to allegedly show "unexpected results." See 16 Appeal Brief, pages 9-15. 17 C. Decision 18 Upon consideration of the appeal, and for the reasons given herein, 19 it is 20 ORDERED that the decision of the Examiner rejecting 21 claims 37-55 over the prior art is reversed 22 REVERSED Appeal 2009-2603 Application 09/156,886 5 MAT cc (via First Class mail): Norris McLaughlin & Marcus, PA 875 Third Avenue 18th Floor New York NY 10022 Tel: 212-808-0700