Ex Parte Zhou

Board of Patent Appeals and Interferences

Jun 12, 2008

10655717 (B.P.A.I. Jun. 12, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PEIGUANG ZHOU
____________

Appeal 2008-1542
Application 10/655,717
Technology Center 1700
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Decided: June 12, 2008
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Before EDWARD C. KIMLIN, THOMAS A. WALTZ, and
LINDA M. GAUDETTE, Administrative Patent Judges.

WALTZ, Administrative Patent Judge.

DECISION ON APPEAL
Appellant seeks review under 35 U.S.C. § 134 from the Examiner’s
rejections of claims 18-22, 24-35, 44-48, and 52-65, in the final Office
Action, dated June 13, 2006. This Board has jurisdiction under 35 U.S.C.
§ 6(b).
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Application 10/655,717

The invention is directed to a composition for an adhesive
composition having high stretchability and sufficient bond strength. The
stretchable adhesive composition includes an atactic polymer, an isotactic
polymer and an elastomeric base polymer (App. Br. 2).1 Independent claim
18 is illustrative and is reproduced below:
18. A laminated structure, comprising:
first and second facing layers; and
a stretchable adhesive composition between at
least a portion of each of the first and second facing
layers, the stretchable adhesive composition including
about 30-90% by weight of an atactic polymer having a
degree of crystallinity of about 20% or less, about 5-30%
by weight of an isotactic polymer having a degree of
crystallinity of about 40% or greater, and about 2-20% by
weight of an elastomeric base polymer;
wherein the laminated structure has a 180º static
peel strength (time to fail) of at least about six hours and
a dynamic peel strength after 85% stretch of at least
about 2000 grams per 2-inch width.
The Examiner relies on the following prior art references in making
the rejections presented for review in this appeal:

Lakshmanan 4,857,594 Aug. 15, 1989
Zhou WO 02/053668 July 11, 2002

All pending claims stand rejected, as follows:
Claims 18-22, 24-35, 44-48, and 52-65 stand rejected under 35
U.S.C. § 103(a) as obvious over Zhou in view of Lakshmanan (Ans. 3).

1 We refer to and cite from the amended Appeal Brief dated Feb. 20, 2007.
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Appellant does not argue the rejected claims separately, but only as a
group. Therefore, the claims stand or fall together. 37 C.F.R.
§ 41.37(c)(1)(vii). The Board selects independent claim 18 as exemplary.
The Appellant contends that the Examiner erred in finding the claims
obvious. Specifically, the Appellant contends that there was no teaching,
suggestion or motivation to substitute the composition in Lakshmann for the
atactic polyolefin component of the adhesive composition in Zhou (App. Br.
4). The Examiner contends that while Zhou does not teach an elastomeric
base polymer, Lakshmanan motivates a skilled artisan to add a selectively
hydrogenated block copolymer to an amorphous polyolefin adhesive to
improve its adhesion to polyolefin substrates (Ans. 4). Further, the claimed
peel strength is understood to be a “latent” property (id.).
ISSUE
Has Appellant established that the Examiner reversibly erred in
rejecting the claims as obvious over Zhou in view of Lakshmanan?
PRINCIPLES OF LAW
Section 103 forbids issuance of a patent when the differences between
the subject matter sought to be patented and the prior art are such that the
subject matter as a whole would have been obvious at the time the invention
was made to a person having ordinary skill in the art to which said subject
matter pertains. KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1734 (2007).
The question of obviousness is resolved on the basis of underlying factual
determinations including (1) the scope and content of the prior art, (2) any
differences between the claimed subject matter and the prior art, (3) the level
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of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966).
When a work is available in one field of endeavor, design incentives
and other market forces can prompt variations of it, either in the same field
or a different one. If a person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability. For the same reason, if a
technique has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual application is
beyond his or her skill. KSR, 127 S.Ct. at 1740. The combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results. Id at 1739.
FINDINGS OF FACT (FF)
We determine the following Factual Findings (FF) from the record
presented in this appeal:
1. The present invention of a laminate structure comprises two
facing layers, adhered together by an adhesive composition, the composition
comprising an atactic polymer, an isotactic polymer and an elastic base
polymer. The composition may also include other additives, such as a
tackifier resin, antioxidizing agent, plasticizer, mineral oil, pigment, filler,
polymer compatibilizer, and combinations thereof (Abstract).
2. The elastic base polymer of the present invention includes
elastic block copolymers such as styrene-isoprene-styrene (“SIS”) and
styrene-butadiene-styrene (“SBS”) (Spec. 12).
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3. Other embodiments of Zhou include adhesive compositions
comprising other additives, including tackifiers (Zhou, p. 23, ll. 8-12).
4. Lakshmanan discloses an adhesive composition comprising an
amorphous polyalphaolefin, a tackifier, and a selectively hydrogenated
monoalkenyl arene/conjugated diene block copolymer (“block copolymer
elastomer”). The block copolymer elastomer may include species such as
SBS and SIS. (Lakshmanan, col. 1, ll. 14-18).
5. Lakshmanan teaches that the addition of the block copolymer
elastomer to the amorphous polyolefin, together with a tackifier, provides an
unexpected improvement in adhesion to polyolefin substrates, as compared
to conventional hot melt adhesives based on amorphous polyolefins
(Lakshmanan, col. 1, ll. 55-62).
ANALYSIS
Rejection under § 103(a) over Zhou in view of Lakshmanan.
Claims 18-22, 24-35, 44-48, and 52-65 in the application stand
rejected under 35 U.S.C. § 103(a) as obvious over Zhou in view of
Lakshmanan. According to the Examiner, Zhou teaches all the elements of
the claimed invention, as found in claim 18, except the addition of an
elastomeric base polymer to the hot melt adhesive (Ans. 4). Appellant did
not dispute this finding made by the Examiner (see App. Br. and Reply Br.
in their entirety).
Lakshmanan discloses a hot-melt adhesive composition comprising
an amorphous polyolefin, a tackifier and a block copolymer elastomer (FF
4). The Examiner contends that one skilled in the art would find replacing
the atactic polyolefin in Zhou with the amorphous polyalphaolefin/block
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copolymer elastomer/tackifier composition of Lakshmanan to have been
obvious (Ans. 4).
We determine that the Examiner has established a prima facie case of
obviousness in rejecting claim 18 under § 103. A combination of familiar
elements found in the prior art combined according to known methods will
likely be found obvious when it does no more than yield predictable results.
KSR, 127 S.Ct. at 1739. The present invention can be viewed as the
adhesive composition taught in Zhou, but with its atactic polyolefin replaced
with an amorphous (atactic) polyolefin, block copolymer elastomer and
tackifer, as taught in Lakshmanan. Based on the disclosure of Lakshmanan
(FF 5), a skilled artisan would expect improved adhesion results with the
addition of the block copolymer elastomer, together with the tackifier, to the
adhesive composition taught in Zhou.
Appellant disputes the Examiner’s conclusion of obviousness,
contending first that the combination of Zhou with Lakshmanan amounts
only to impermissible hindsight and that Zhou provides no teaching,
suggestion or motivation for a skilled artisan to add an elastomer to the
adhesive composition of Zhou (App. Br. 4). We do not find this argument
persuasive because it does not address the reasons relied on by the Examiner
in finding motivation to combine the references in the manner claimed.
Specifically, the Examiner does not rely on Zhou to provide a teaching,
suggestion or motivation to add an elastomer. Rather, the Examiner
contends that Lakshmanan motivates a skilled artisan to add a selectively
hydrogenated block copolymer to an amorphous polyolefin adhesive in order
to improve its adhesion to polyolefin substrates (Ans. 5).
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Appellant argues that Lakshmanan requires addition of a tackifier
along with a block copolymer elastomer to an amorphous, atactic polyolefin.
(App. Br. 6; Reply Br. 3). Appellant further maintains that Zhou
discourages the use of more than two components in the adhesive
composition (App. Br. 5.) Appellant thus contends that “the two references
are contradictory and irreconcilable, and provide no suggestion or
motivation to combine the teachings thereof to make the claimed
composition” (App. Br. 6-7). We are not persuaded by Appellant’s
argument since, as conceded by Appellant (App. Br. 5), Zhou clearly states
that optional components, including tackifiers, may be added to the
disclosed adhesive composition (FF 3).
Appellant further argues that his invention of a laminate structure with
a three-component adhesive (atactic polymer, isotactic polymer and
elastomeric base polymer) attains unexpected results in static and dynamic
peel strength, and that this improvement is obtained without the use of a
tackifier, contrary to the teaching of Lakshmanan (App. Br. 6) which
identifies a tackifier as an essential ingredient of the disclosed adhesive
compositions (App. Br. 5 (citing Lakshmanan, col. 4, ll. 30-32)). Appellant
contends that the claims should be found allowable in view of the
improvements achieved in his invention without a tackifier. (App. Br. 6)
We are not persuaded by Appellant’s arguments or evidence of
unexpected results (see Reply Br. 3-4) because they are not commensurate in
scope with the claims. Claim 18 is phrased as “a laminate[d] structure,
comprising … [a] stretchable adhesive composition including … an atactic
polymer, … an isotactic polymer … and … an elastomeric base polymer”
(emphasis added). Transitional words such as comprises, and its synonym,
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includes, are open-ended, and do not limit the claim to only those
ingredients listed, but rather permit the use of other, unnamed ingredients.
Mars, Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376 (Fed. Cir. 2004). As
such, we interpret claim 18 as open to the inclusion of additional unnamed
layers/elements in the laminated structure as well as the inclusion of
additional components, such as tackifiers, in the adhesive composition.
Throughout his Brief, Appellant stressed there was no teaching, suggestion
or motivation to combine the disclosures in Zhou and Lakshmanan. In this
regard, Appellant subsequently contends that, under KSR, the proper
analysis of obviousness is “whether there was an apparent reason to combine
the known elements in the fashion claimed by [Applicant]” (Reply Br. 2
(quoting KSR, 127 S.Ct. at 1741)). According to Appellant, “a person
skilled in the art would have seen no benefit in combining the teachings of
Zhou et al. and Lakshmanan et al. and would not have created Applicant’s
claimed laminate.” (Reply Br. 2.) We disagree. As explained by the
Examiner, Lakshmanan teaches that adding block copolymer elastomers to
polyolefin adhesives improves adhesion to polyolefin substrates. (Ans. 6,
see FF 5). Appellant has not provided arguments or evidence to refute the
Examiner’s finding that one of ordinary skill in the art would have expected
an improvement in adhesion. Under the analysis of KSR, we determine that
the Examiner has provided a sufficient reason to combine the disclosures of
Zhou and Lakshmanan.
CONCLUSION
In summary, we sustain the rejection of pending claims 18-22, 24-35, 44-
48, and 52-65 under § 103(a) as obvious over Zhou in view of Lakshmanan.
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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).

AFFIRMED

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PL initials:

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