Ex Parte Storbeck et al

Board of Patent Appeals and Interferences

Aug 10, 2009

10219513 (B.P.A.I. Aug. 10, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte REINHARD STORBECK, MARC HUSEMANN,
CLAUS MEYER, and JURGEN SIEVERS
____________

Appeal 2009-004488
Application 10/219,513
Technology Center 3700
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Decided: August 10, 2009
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Before WILLIAM F. PATE, III, JENNIFER D. BAHR, and
LINDA E. HORNER, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Reinhard Storbeck et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the Examiner’s decision finally rejecting claims 6 and 18-20.
Claims 1 and 3 have been cancelled, and claims 2, 4, 5, 7-17, and 21-25
have been withdrawn. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM.

THE INVENTION
The Appellants’ claimed invention is a process for producing pressure
sensitive adhesive (PSA) punched products. Spec. 1:7-10. Claim 18,
reproduced below, is representative of the subject matter on appeal.
18. A process for producing a punched pressure
sensitive adhesive product comprising:
a) orienting a polyacrylate pressure sensitive
adhesive by a coating process:
b) crosslinking said adhesive less than 60
minutes after the coating process; and
c) punching adhesive from a support
material with a punching tool to produce a
punched product,
wherein said adhesive exhibits shrinkback of
at least 3% relative to an initial length of a strip of
said adhesive in order to prevent the adhesive of
said punched product from adhering to said
punching tool after punching.
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THE EVIDENCE
The Examiner relies upon the following evidence:
Tran US 6,103,316 Aug. 15, 2000
Yarusso US 5,866,249 Feb. 2, 1999
Genich DE 198 37 764 C1 Mar. 16, 20001

THE REJECTIONS
The Appellants seek review of the following decisions by the
Examiner:
1. Rejection of claims 6, 18, and 19 under 35 U.S.C. § 103(a) as
unpatentable over Yarusso and Genich.
2. Rejection of claim 20 under 35 U.S.C. § 103(a) as unpatentable over
Yarusso, Genich, and Tran.

ISSUES
The Examiner concluded that claims 6, 18, and 19 are unpatentable
over Yarusso and Genich, and claim 20 is unpatentable over Yarusso,
Genich, and Tran. Ans. 3-5. Both of these conclusions are based in part on
the finding that Yarusso teaches that the PSA is oriented by a coating
process. Ans. 3.
The Appellants assert that Yarusso orients the PSA through a cooling
process. App. Br. 4. In support of that assertion, the Appellants maintain
that “Yarusso clearly states that the coating process is unable to provide the

1 The Examiner notes that the Genich reference is related to U.S. Patent No.
6,649,011 B1, issued November 18, 2003. Ans. 3.
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necessary orientation to the PSA.” App. Br. 4 (citing to Yarusso, col. 19, ll.
17-20). The Appellants then contrast this disclosure with the claimed
invention, which “does not require the use of a cooling mechanism to
produce and maintain the orientation.” App. Br. 4.
The issue before us is:
Have the Appellants shown the Examiner erred in finding that
Yarusso orients the PSA by a coating process as claimed?

FINDINGS OF FACT
We find that the following enumerated facts are supported by at least
a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422,
1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
1. Yarusso discloses a pressure sensitive adhesive having
anisotropic peel behavior. Yarusso, col. 1, ll. 12-16.
2. Yarusso discloses a process of making a PSA using
polyisobutylene that includes orienting the elastomer by shearing,
elongating, stretching, or extending to induce stress and strain, and then
cooling the resulting oriented composition at a cooling rate fast enough to
induce partial crystallization in the oriented state. Yarusso, col. 3, ll. 46 to
col. 4, l. 3; fig. 1.
3. In particular, Yarusso discloses that the shaping and straining of
the elastomer can occur by flowing hot melt out of die 32 and wiping it onto
web 34, which is on the surface of a cooled coating roll 35. Yarusso, col. 5,
ll. 35-52; fig. 1.
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4. Yarusso discloses that it is important that the cooling rate be
sufficiently fast to preserve the orientation induced by the coating operation
by crystallizing the PSA before the orientation relaxes. Yarusso discloses
that for thin backings, a cooling roll may be sufficient for this task, but for
thicker backings, supplemental cooling means may be required. Yarusso,
col. 6, ll. 13-26; see also Examples 9-13 at col. 18, l. 17 to col. 19, l. 20.
5. The Appellants’ Specification describes the orientation process
as follows:
In one preferred embodiment, orientation within the PSA
is produced by the coating process. For coating as a
hotmelt, and hence also for orientation, it is possible to
employ a variety of coating techniques. In one
embodiment the polyacrylate PSAs are coated by a roll
coating process, and the orientation is produced by
drawing. … In another version the orientation is achieved
by coating through a melt die. …. Orientation of the
PSA here can be produced on the one hand within the
coating die, by virtue of the die design, or else following
emergence from the die, by a drawing process. … In
another preferred process, the orientation is achieved by
extrusion coating. Extrusion coating is preferably
performed using an extrusion die.
Spec. 14, ll. 17-35.
6. The Examiner found that polyacrylate is an art recognized
equivalent of polyisobutylene, as evidenced by Genish. Ans. 3.
7. The Appellants make no argument against the finding recited in
finding of fact 6. App. Br. passim.

PRINCIPLES OF LAW
The Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
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(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)).

ANALYSIS
Rejection of claims 6, 18, and 19 under 35 U.S.C. § 103(a) as unpatentable
over Yarusso and Genich
The Appellants argue claims 6, 18, and 19 as a group. App. Br. 3-4.
As such, we select claim 18 as the representative claim, and claims 6 and 19
stand or fall with claim 18. 37 C.F.R. § 41.37(c)(1)(vii) (2008).
Claim Construction
The Appellants’ argument that Yarusso orients the PSA through a
cooling process is premised on an incorrect interpretation of the claim.
Claim 18 recites a “process for producing PSA product comprising:….” The
transitional phrase “comprising” is open-ended and does not exclude
additional, unrecited elements, such as a cooling process. See Genentech,
Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997) (“‘Comprising’ is a
term of art used in claim language which means that the named elements are
essential, but other elements may be added and still form a construct within
the scope of the claim.”). See also Invitrogen Corp. v. Biocrest Mfg., L.P.,
327 F.3d 1364, 1368 (Fed. Cir. 2003) (“The transition ‘comprising’ in a
method claim indicates that the claim is open-ended and allows for
additional steps.”).
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Claim 18 does not require that the coating process is the only process
that orients the PSA product; rather, other steps may be included. The
Appellants could have chosen to claim the process so that orientation of the
PSA product is produced solely by the coating process, or to specifically
exclude a cooling process; however, the Appellants chose not to claim the
process in such a manner. See In re Morris, 127 F.3d 1048, 1056 (Fed. Cir.
1997) (It is the Appellants’ burden to precisely define the invention).
Claim 18 requires orienting the PSA by “a coating process.” The
Appellants’ Specification describes that the coating process may be
accomplished by a variety of techniques, such as roll coating where the
orientation is produced by drawing, coating through a melt die, or extrusion
coating (Fact 5). We interpret claim 18 to require a process by which the
PSA is drawn, forced through a die, extruded, otherwise strained and then
deposited onto a surface, such as a roller, resulting in orientation of the PSA,
with additional steps permissible.2
Yarusso discloses orienting a PSA with a coating process that induces
stress that orients the PSA (Facts 1-3). Yarusso cools its roll to crystallize
the orientation (Facts 2-4).3 We conclude that Yarusso discloses a coating
process that orients the PSA, as claimed. Yarusso’s additional step of
cooling does not alter this conclusion because the Appellants’ claim is open-

2 The Appellants’ Specification, similar to the disclosure in Yarusso,
discloses that in order to shorten the time between coating and crosslinking,
the PSA is deposited on a cooled roller. See Spec. 15:4-7 and 30-36.

3 While Yarusso discloses a process for making a PSA using
polyisobutylene, and the claim recites polyacrylate, the rejection finds that
polyacrylate is an art recognized equivalent of polyisobutylene (Fact 6), and
this finding is not challenged by the Appellants (Fact 7).
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ended, allowing for additional steps. Likewise, Yarusso’s disclosure that
supplemental cooling may be required also does not alter this conclusion
(Fact 4).
The Appellants have failed to demonstrate error by the Examiner in
the decision to reject claim 18. Claims 6 and 19 fall with claim 18.

Rejection of claim 20 under 35 U.S.C. § 103(a) as unpatentable over
Yarusso, Genich, and Tran
Claim 20 depends from claim 19, which in turn depends from
independent claim 18. The Appellants’ argument for claim 20 (App. Br. 3-
4) is the same as for claim 18 that we analyzed, supra, and that analysis
applies equally to claim 20.

CONCLUSION
The Appellants have failed to demonstrate the Examiner erred in the
rejection of claims 6, 18, 19, and 20 because Yarusso orients the PSA by a
coating process as claimed.

DECISION
We affirm the Examiner's rejection of claims 6 and 18-20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED

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