Ex Parte Sch¿mann et alDownload PDFPatent Trial and Appeal BoardDec 22, 201612917771 (P.T.A.B. Dec. 22, 2016) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 12/917,771 11/02/2010 Uwe Sch¿mann 101769-581 WCG 2150 27386 7590 12/22/2016 GERSTENZANG, WILLIAM C. NORRIS MCLAUGHLIN & MARCUS, PA 875 THIRD AVE, 8TH FLOOR NEW YORK, NY 10022 EXAMINER WALSHON, SCOTT R ART UNIT PAPER NUMBER 1788 MAIL DATE DELIVERY MODE 12/22/2016 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte UWE SCHUMANN, KIRSTIN WEILAND, and ROSE-MARIE GOUTTEFARDE ____________ Appeal 2015-006037 Application 12/917,771 Technology Center 1700 ____________ Before BEVERLY A. FRANKLIN, JULIA HEANEY, and DEBRA L. DENNETT, Administrative Patent Judges. HEANEY, Administrative Patent Judge. DECISION ON APPEAL Appellants1 request review pursuant to 35 U.S.C. § 134(a) of a decision of the Examiner finally rejecting claims 1, 2, 5–12, and 14–15 of Application 12/917,771. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellants identify the real party in interest as tesa SE. Br. 1. Appeal 2015-006037 Application 12/917,771 2 BACKGROUND The subject matter on appeal relates to a polyurethane-based pressure- sensitive adhesive comprising the reaction product of polyisocyanates and a hydroxyl-functionalized polyurethane prepolymer. Br. 2–3. Representative claim 1 is reproduced from the Claims Appendix of the Appeal Brief as follows (emphasis added): 1. Polyurethane-based pressure-sensitive adhesive wherein the polyurethane comprises the chemical reaction product of at least the following starting materials: a) polyisocyanates comprising at least one aliphatic or alicyclic diisocyanate and at least one aliphatic or alicyclic polyisocyanate having an isocyanate functionality of three or more than three, the mole fraction of the aliphatic or alicyclic polyisocyanates having an isocyanate functionality of three or more than three as a proportion of the polyisocyanates being at least 18 per cent, and b) at least one pressure-sensitively adhesive, hydroxyl- functionalized polyurethane prepolymer having a complex viscosity η*, measured by means of Dynamic Mechanical Analysis in a plate/plate arrangement at room temperature with an oscillation frequency of 10 rad/s, which is greater than or equal to 8000 Pas and a hydroxyl functionality of greater than 2. REFERENCES The Examiner relied upon the following prior art in rejecting the claims on appeal: Ishikawa US 5,085,364 Feb. 4, 1992 Kydonieus US 5,591,820 Jan. 7, 1997 Takahashi JP 2006-182795 A July 13, 2006 Schumann WO 2009/098141 Aug. 13, 2009 Schumann US 2010/0307682 A1 Dec. 9, 2010 Appeal 2015-006037 Application 12/917,771 3 THE REJECTION Claims 1, 2, 5–12, and 14–15 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Takahashi, Schumann, Ishikawa, and Kydonieus. DISCUSSION Appellants argue all appealed claims as a group. Br. 4–7. We choose claim 1 as representative; all other claims stand or fall with claim 1. We have reviewed each of Appellants’ arguments, and find that a preponderance of the evidence supports the conclusion of obviousness. Accordingly, we sustain the rejections for the reasons explained in the Final Rejection dated June 10, 2014 (“Final Act.”) and Answer dated March 26, 2015 (“Ans.”). We add the following primarily for emphasis. Appellants argue that the rejection should be reversed for several reasons: Takahashi does not disclose a prepolymer having pressure- sensitive adhesive properties; Takahashi does not teach reacting a polyurethane prepolymer with a mixture of di-and triisocyanates; Schumann does not disclose a pressure-sensitive adhesive polyurethane prepolymer; and the claimed polyurethane can be processed in an advantageous manner that would not be possible using the materials disclosed in Takahashi and Schumann. Br. 4–5. As to Takahashi, the Examiner responds that Takahashi describes that its adhesive composition is formed from a hydroxyl terminated urethane prepolymer, and describes both di- and tri-functional isocyanate compounds as reactants with the prepolymer. Ans. 3, citing Takahashi ¶¶ 14–15, 23–24, 37. Appellants do not dispute these findings, in that they have not filed a Reply Brief. As to Schumann, the Examiner responds that Schumann in fact Appeal 2015-006037 Application 12/917,771 4 describes a thermally activatable bonding sheet with an adhesive, which possesses pressure-sensitive adhesive properties when heated. Ans. 4, citing Schumann ¶¶ 25, 28. Appellants’ final argument (Br. 5–6) is not persuasive of reversible error because claim 1, a product claim, does not contain process limitations. Further, process claims 11, 12, and 14 do not recite any steps relating to how the components are reacted. Accordingly, we affirm the rejection of claims 1, 2, 5–12, and 14–15 SUMMARY We affirm the rejection of claims 1, 2, 5–12, and 14–15. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED Copy with citationCopy as parenthetical citation