Ex parte SHIH et al.

Board of Patent Appeals and Interferences

Sep 17, 1998

07959011 (B.P.A.I. Sep. 17, 1998)

Application for patent filed October 9, 1992. According1
to appellants, the application is a continuation-in-part of
Application 07/628,803, filed December 14, 1990, now U.S.
Patent No. 5,177,122, issued January 5, 1993 which is a
continuation- in-part of Application 07/389,012 filed August
2, 1989, now abandoned.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the
Board.
Paper No.
15
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte YEN-JER SHIH and
ARTHUR B. PRUIKSMA
____________
Appeal No. 95-2011
Application No. 07/959,0111
____________
ON BRIEF
____________
Appeal No. 95-2011
Application No. 07/959,011
2
Before JOHN D. SMITH, HANLON, and OWENS, Administrative Patent
Judges.
HANLON, Administrative Patent Judge.
Appeal No. 95-2011
Application No. 07/959,011
3
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the final
rejection of claims 1-18, all of the claims pending in the
application. Claims 1 and 12 are representative of the
subject matter on appeal and read as follows:
1. A stable one-part latex composition produced by an aqueous
emulsion polymerization method wherein a core-shell polymer is
formed, said method comprising:
(a) forming a core polymer by emulsion polymerization,
said core polymer comprising:
(1) from 1 to 60% by weight of an epoxy resin, and
(2) from 40 to 99% by weight of at least one
ethylenically unsaturated monomer; and
(b) forming a shell polymer on said core by emulsion
polymerization of a second monomer composition
in the presence of said core, said monomer composition
comprising;
(1) from 1 to 99.5% by weight of at least one
ethylenically unsaturated monomer; and
(2) from 0.5 to 10% by weight of a hydroxyl or
carboxyl functional monomer; providing that
said monomers in both said core and shell do not
contain amino functional groups and wherein
said core-shell polymer comprises from 1 to 80%
by weight of the core polymer and from 20 to 99% by
weight of the shell polymer; and
(c) post-adding to the formed core-shell polymer
composition an effective curing amount of an organic
compound containing at least one amino functional
Appeal No. 95-2011
Application No. 07/959,011
The application which matured into the Shih patent was2
filed on December 14, 1990 which is the patent's effective
date as "prior art" under 35 U.S.C. § 102(e).
4
group which is available for later reaction with said
epoxy resin upon drying to produce a crosslinked
polymer product.
12. A contact adhesive comprising the latex composition of
Claim 1 wherein the core-shell polymer has a Tg of -70 to 50EC
and an effective tackifying amount of a tackifer.
The references relied upon by the examiner are:
Ting 4,285,847 Aug. 25,
1981
Shih 5,177,122 Jan. 5,
19932
Handbook of Adhesives 437-49 (Irving Skeist ed., 3rd ed. 1990)
(hereinafter "Skeist").

The following rejections are at issue in this appeal:
(1) Claims 1-11 are rejected under 35 U.S.C. § 103 as
being unpatentable over Ting.
(2) Claims 12-18 are rejected under 35 U.S.C. § 103 as
being unpatentable over the combination of Shih and Skeist.
Grouping of claims
According to appellants (Brief, p. 2):
Appeal No. 95-2011
Application No. 07/959,011
5
Claims 1 to 11 stand or fall together on the
ground of rejection that they are unpatentable over Ting.

Claims 12 to 18 stand or fall together on the
ground of rejection that they are unpatentable over
Shih in view of Handbook of Adhesives [Skeist].
Therefore, for purposes of this appeal, claims 2-11 stand or
fall with the patentability of claim 1, and claims 13-18 stand
or fall with the patentability of claim 12. See 37 CFR §
1.192(c)(7).
Claim 1
Claim 1 is rejected under 35 U.S.C. § 103 as being
unpatentable over Ting. We reverse this rejection.
Claim 1 is directed to a latex composition comprising a
core-shell polymer produced by an aqueous emulsion
polymerization method. The core polymer comprises an epoxy
resin and at least one ethylenically unsaturated monomer, and
the shell polymer comprises at least one ethylenically
unsaturated monomer and a hydroxyl or carboxyl functional
monomer. An effective curing amount of an organic compound
containing at least one amino functional group is post-added
to the core-shell polymer composition for later reaction with
Appeal No. 95-2011
Application No. 07/959,011
6
the epoxy resin to produce a crosslinked polymer product.
According to claim 1, the monomers in both the core and shell
do not contain amino functional groups.
Ting discloses a two-stage process for producing graft
polymers using the same or similar reactants as recited in
claim 1. The examiner correctly points out that claim 1 is a
product-by-process claim (Answer, p. 5). Manifestly, the
patentability of a product in a product-by-process claim does
not depend on its method of production, but rather
patentability is based on the product itself. In re Thorpe,
777 F.2d 695, 697-98, 227 USPQ 964, 966 (Fed. Cir. 1985).
Appellants point out (Brief, p. 3):
It must be noted that while the claims are described
in product by process form, they are defined by
several structural features which distinguish them
from Ting. First, the product claimed is directed
to a core-shell polymer where the epoxy is present
in the core which is encapsulated by the shell
(i.e., shell formed on the core). [Emphasis in
original.]
However, according to the examiner (Answer, p. 6):
Appeal No. 95-2011
Application No. 07/959,011
7
Although Ting does not state that the final
polymer is a core-shell polymer, Ting uses a two-
stage graft polymerization technique which would
presumably lead to core-shell polymers. In this
connection, Appellants have already acknowledged it
is known that multi-stage graft polymerization
yields core-shell polymers. See page 2, lines 1-11,
of the specification. Ting uses multi-stage graft
polymerization. Graft polymers are those where
poly-(B) are grafted onto the backbone of poly-(A):
AAAAAAAAAAAAAAAAAAAA
* * *
B B B
B B B
B B B.
As such, it would appear that Ting’s second stage
polymer would also form a sheath around the first
stage polymer. . . . In the instant case,
Appellants have not met their burden of clearly
showing that Ting’s polymer would not be a core-
shell polymer. [Underlining ours.]
We disagree. The portion of appellants’ specification
relied upon by the examiner states (p. 2, lines 1-11):
The term core-shell structure has become well-
understood in the art as defining a layered
particulate composition having a polymeric center or
core surrounded by a shell or overcoat formed of a
second polymeric material. Methods for the
preparation of such core-shell particulate
compositions are well known in the art and include a
variety of layered particulate materials having a
core and one or more shell layers. For example,
U.S. Pat. No. 3,661,994 discloses graft polymers
formed by a sequential polymerization process,
wherein a rigid, polymeric seed or core is
Appeal No. 95-2011
Application No. 07/959,011
8
surrounded by a graft polymerized rubber layer, and
optionally encapsulated with a graft polymerized
rigid outer layer. [Emphasis added.]
Thus, it would appear from appellants’ characterization of the
teachings of U.S. Patent No. 3,661,994 that the graft polymer
disclosed therein forms a shell around a separate polymeric
core to produce a core-shell polymer as claimed by appellants.
Accordingly, we agree with appellants that Ting is
directed to a different product than the claimed invention
(Brief, p. 3):
[The Ting product] does not comprise a core-shell
polymer where epoxy resin is present in the core
polymer which is encapsulated with a shell polymer,
disclosed therein i.e., the shell is formed on the
core polymer which contains the epoxy component. In
Ting, the epoxy is not in a core as in the core-
shell containing product of this invention but is
rather dispersed or mixed throughout the
composition.
See In re Oetiker, 977 F.2d 1143, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992) (the examiner bears the initial burden of
presenting a prima facie case of unpatentability).
Appeal No. 95-2011
Application No. 07/959,011
9
Claim 12
Claim 12 is rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of Shih and Skeist. We also
reverse this rejection.
Claim 12 is directed to a contact adhesive comprising the
latex composition of claim 1 and a tackifier. Shih discloses
latex compositions prepared by a core-shell multistage
polymerization process (col. 1, lines 9-11). The latex
compositions disclosed in Shih are useful as laminating
adhesives (col. 1, lines 24-31).
According to the examiner (Answer, pp. 7-8):
Compositionally, the adhesive of Shih’s Example
4 differs from that of appealed claim 12 only in
that a tackifier is not included. However, Skeist
shows that it is well known that acrylic polymers
can be used as laminating as well as contact
adhesives. . . . Skeist also teaches that contact
adhesives require immediate and high bond strength.
. . . Further, Skeist teaches that tackifiers may
be added to acrylics to achieve high tack.
Therefore, it would have been obvious to one of
ordinary skill in the art to add a tackifier into
the laminating adhesive of Shih’s example in order
to increase the tack properties thereof, motivated
by a reasonable expectation of success.
Appeal No. 95-2011
Application No. 07/959,011
10
The examiner’s position is not without merit. However, a
close examination of Skeist reveals that there is no
suggestion to use a core-shell polymer of the type disclosed
in Shih as a contact adhesive. We agree with appellants that
"neither reference discloses or suggests the particular
composition as claimed could be a contact adhesive" (Brief, p.
4). Therefore, there would have been no reason to add a
tackifier to the adhesive disclosed in Shih.
In addition, Shih discloses that heat may be used to bond
the laminating adhesives to film substrates (col. 13, lines
19-33):
[T]he adhesive is coated on a film and allowed to
dry at room temperature (or dried at moderate heat).
The adhesive coated film is then laminated to the
desired substrate, for example, a corona treated
polyethylene or polypropylene film or other lamina
by passing through a "hot nip" roller. The
resultant laminate is characterized by the immediate
formation of a strong bond which gains strength on
room temperature (R.T.) as a result of polymeric
hardening and curing.
According to Skeist (p. 443, col. 2):
Heat and Pressure Bonding
With heat-activated bonding techniques, a non-blocking
(tack-free) film is applied to one substrate and later
reactivated by the application of heat, which produces
Appeal No. 95-2011
Application No. 07/959,011
11
adhesive flow onto the second substrate during a nipping
operation, thereby effecting a bond on cooling.
Thus, it would appear that one having ordinary skill in the
art would have been discouraged from adding a tackifier to the
laminating adhesive disclosed in Shih. See Gillette Co. v.
S.C. Johnson & Son, Inc., 919 F.2d 720, 724, 16 USPQ2d 1923,
1927 (Fed. Cir. 1990) (the closest prior art reference "would
likely discourage the art worker from attempting the
substitution suggested").

The decision of the examiner is reversed.
Appeal No. 95-2011
Application No. 07/959,011
12
REVERSED
JOHN D. SMITH )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ADRIENE LEPIANE HANLON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
TERRY J. OWENS )
Administrative Patent Judge )
Appeal No. 95-2011
Application No. 07/959,011
13
Edwin M. Szala
National Starch and Chemical Company
Box 6500
Bridgewater, NJ 08807-0500
Leticia
Appeal No. 95-2011
Application No. 07/959,011
APJ HANLON
APJ SMITH
APJ OWENS
REVERSED
Prepared: December 2, 1999
Draft Final
3 MEM. CONF. Y N
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PALM / ACTS2 / BOOK
DISK (FOIA) / REPORT