H.B. Fuller Company

Patent Trials and Appeals Board

Feb 10, 2020

14934789 - (D) (P.T.A.B. Feb. 10, 2020)

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.
14/934,789 11/06/2015 Thomas F. Kauffman AH-016-US-02 9688
27091 7590 02/10/2020
H.B. FULLER COMPANY
Patent Department
1200 WILLOW LAKE BLVD.
P.O. BOX 64683
ST. PAUL, MN 55164-0683
EXAMINER
HOCK, ELLEN SUZANNE
ART UNIT PAPER NUMBER
1782
NOTIFICATION DATE DELIVERY MODE
02/10/2020 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
julie.post@hbfuller.com
patent.dept@hbfuller.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte THOMAS F. KAUFFMAN, SCOTT C. SCHMIDT, CLAUDIA
MOSANU, TIMOTHY W. ROSKA, AMANDA L. SCHMIT,
SHARF U. AHMED, and GARY J. ROY
____________

Appeal 2018-008680
Application 14/934,789
Technology Center 1700
____________

Before KAREN M. HASTINGS, MICHAEL P. COLAIANNI, and
JANE E. INGLESE, Administrative Patent Judges.

INGLESE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner’s decision to finally reject claims 1–28.2 We have jurisdiction
over this appeal under 35 U.S.C. § 6(b). We heard oral arguments from
Appellant’s representative on January 23, 2020.
We AFFIRM IN PART and enter a NEW GROUND OF REJECTION
pursuant to 37 C.F.R. § 41.50(b).

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies H.B. Fuller Company as the real party in
interest. Appeal Brief filed May 3, 2018 (“Appeal Br.”) at 3.
2 Final Office Action entered December 8, 2017 (“Final Act.”).
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CLAIMED SUBJECT MATTER
Appellant claims a hot melt adhesive composition. Appeal Br. 7–8.
Claim 1 illustrates the subject matter on appeal, and is reproduced below
with contested subject matter italicized:
1. A hot melt adhesive composition comprising:
at least 40% by weight of an unmodified, semi-crystalline
propylene polymer comprising at least 50% by weight
propylene;
at least 15% by weight non-functionalized wax, the non-
functionalized wax being selected from the group consisting of
polyethylene wax, Fischer Tropsch wax, and combinations
thereof, the non-functionalized wax comprising a first non-
functionalized wax and a second non-functionalized wax
different from the first non-functionalized wax; and
no greater than 8% by weight of an ethylene-
ethylenically unsaturated ester copolymer.

Appeal Br. Ai (Claims Appendix) (emphasis added).
REJECTIONS
The Examiner maintains the following rejections in the Examiner’s
Answer entered August 13, 2018 (“Ans.”):
I. Claims 1–13 and 18–23 under 35 U.S.C. § 102(a)(1) as
anticipated by Tse et al. (WO 2012/051239 Al, published April 19, 2012);
II. Claims 24–26 under 35 U.S.C. § 102(a)(1) as anticipated by, or
alternatively, under 35 U.S.C. § 103 as obvious over, Tse;
III. Claims 1, 2, 4–11, 13, 14, 18, and 26–28 under 35 U.S.C.
§ 102(a)(1) as anticipated by Rodriguez et al. (US 2010/0132886 Al,
published June 3, 2010); and
IV. Claims 15–17 under 35 U.S.C. § 102(a)(1) as anticipated by, or
alternatively, under 35 U.S.C. § 103 as obvious over, Rodriguez.
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FACTUAL FINDINGS AND ANALYSIS
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions, we do not sustain the Examiner’s rejection
of claims 1–13 and 18–23 under 35 U.S.C. § 102(a)(1) as anticipated by Tse
(Rejection I). We, however, enter a new ground of rejection against claim 1
under U.S.C. § 103 as unpatentable over Tse, for the reasons discussed
below. We sustain the Examiner’s rejection of claims 24–26 under
35 U.S.C. § 103 as obvious over Tse (Rejection II), but designate our
affirmance as including new grounds of rejection, for the reasons discussed
below. We do not reach the Examiner’s alternative rejection of claims 24–
26 under 35 U.S.C. § 102(a)(1) as anticipated by Tse, because this rejection
is cumulative to the rejection of these claims under 35 U.S.C. § 103 as
obvious over Tse. We sustain the Examiner’s rejection of claims 1, 2, 4–11,
13, 14, 18, 26, and 28 under 35 U.S.C. § 102(a)(1) as anticipated by
Rodriguez, but reverse the Examiner’s rejection of claim 27 under 35 U.S.C.
§ 102(a)(1) as anticipated by Rodriguez (Rejection III). We do not sustain
the Examiner’s rejection of claims 15–17 under 35 U.S.C. § 102(a)(1) as
anticipated by, or alternatively, under 35 U.S.C. § 103 as obvious over,
Rodriguez (Rejection IV).
We review appealed rejections for reversible error based on the
arguments and evidence the appellant provides for each issue the appellant
identifies. 37 C.F.R. § 41.37(c)(1)(iv); Ex parte Frye, 94 USPQ2d 1072,
1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637
F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that even if the Examiner had
failed to make a prima facie case, “it has long been the Board’s practice to
require an applicant to identify the alleged error in the examiner’s
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rejections”)).
Rejection I
We first address the Examiner’s rejection of claims 1–13 and 18–23
as anticipated by Tse. Appellant presents arguments for claim 1 only, to
which we accordingly limit our discussion. Appeal Br. 10–15; 37 C.F.R. §
41.37(c)(1)(iv).
Claim 1 recites a hot melt adhesive composition comprising, in part, a
polypropylene polymer, a first non-functionalized wax, and a second non-
functionalized wax different from the first non-functionalized wax. Claim 1
requires the first and second waxes to be selected from polyethylene wax,
Fischer Tropsch wax, and combinations thereof.
The Examiner finds that Tse discloses an adhesive composition
comprising at least one propylene-based copolymer and one or more waxes,
which may be “the same or different types of waxes,” and “are non-
functionalized, such as polyethylene wax, Fischer-Tropsch waxes, and
combinations.” Final Act. 2–3 (citing Tse ¶¶ 11, 14, 20, 33, 140).
Appellant argues that Appellant’s Specification defines the term
“wax” as “a polymer or an oligomer having a heat of fusion greater than 60
Joules per gram and a viscosity no greater than 750 centipoise (cP) at 190
°C.” Appeal Br. 12 (citing Spec. 7, ll. 3–5). Appellant argues that although
Tse discloses polypropylene-based adhesive compositions that may
optionally include a wax component, Tse does not teach that the “waxes
should exhibit a heat of fusion greater than 60 J/g and a viscosity of no
greater than 750 cP at 190 °C, as required by claim 1.” Appeal Br. 11–13.
Although Tse does disclose that the adhesive composition described
in the reference may include one or more polyethylene waxes and/or
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Fischer-Tropsch waxes (Tse ¶¶ 140, 142), the Examiner does not identify
any disclosure in Tse that describes the heat of fusion or the viscosity of the
polyethylene and Fischer-Tropsch waxes. The Examiner does point out in
the Answer, however, that Tse discloses exemplary adhesive compositions
that include POLYWAX 3000 (“PW3000”), and Appellant’s Specification
discloses that POLYWAX 3000 is a “[u]seful polyethylene wax” for the hot
melt adhesive composition of Appellant’s invention (Ans. 4–5), providing
the Examiner with a reasonable basis for concluding that POLYWAX 3000
meets the definition of “wax” set forth in Appellant’s Specification. Spec.
11, ll. 3–10; In re Best, 562 F.2d 1252, 1255 (CCPA 1977). None of Tse’s
exemplary adhesive compositions include a Fischer-Tropsch wax, however,
and the Examiner does not identify any disclosure in Tse of a Fischer-
Tropsch wax having a heat of fusion and viscosity as prescribed by
Appellant’s definition of “wax.” Nor does the Examiner provide evidence
establishing that all Fischer-Tropsch waxes have a heat of fusion and
viscosity within the ranges required by Appellant’s definition of “wax.”
Consequently, on the record before us, the Examiner does not provide
a sufficient factual basis to establish that Tse discloses an adhesive
composition comprising a first non-functionalized wax and a second non-
functionalized wax different from the first non-functionalized wax, where
each wax is selected from polyethylene wax, Fischer Tropsch wax, and
combinations thereof, and has a heat of fusion greater than 60 J/g and a
viscosity of no greater than 750 cP at 190 °C, as required by claim 1.
We, accordingly, do not sustain the Examiner’s rejection of claim 1
and claims 2–13 and 18–23, which each depend from claim 1, under 35
U.S.C. § 102(a)(1) as anticipated by Tse. We, however, enter a new ground
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of rejection against claim 1 under U.S.C. § 103 as unpatentable over Tse
pursuant to our authority under 37 C.F.R. § 41.50(b), for reasons that follow.
Tse discloses a hot melt adhesive composition comprising from about
5% by weight to about 90% by weight of a propylene-based polymer that
includes at least 60% by weight propylene, and has a crystallinity of from
about 0.5% to about 50% (semi-crystalline propylene polymer). Tse ¶¶ 11,
13, 14, 20, 33. The propylene polymer content range disclosed in Tse of
from about 5% by weight to about 90% by weight overlaps the range of “at
least 40% by weight” propylene polymer recited in claim 1, rendering the
recited range prima facie obvious. In re Peterson, 315 F.3d 1325, 1329–330
(Fed. Cir. 2003) (“In cases involving overlapping ranges, we and our
predecessor court have consistently held that even a slight overlap in range
establishes a prima facie case of obviousness . . . .”). And the propylene
content of at least 60% by weight in the propylene-based polymer disclosed
in Tse overlaps the range of “at least 50% by weight” propylene recited in
claim 1, rendering the recited range prima facie obvious. Peterson, 315 F.3d
at 1329–330.
Appellant’s Specification defines an “unmodified polymer” as “a
polymer that has not been modified in the presence of a free radical
initiator.” Spec. 7, ll. 8–9. Tse discloses that the propylene-based polymer
may be “degraded” by treating the polymer with a free radical initiator to
increase the melt flow rate of the polymer. Tse ¶ 42. Tse indicates,
however, that such degradation of the polymer is optional, stating that the
propylene-based copolymer component of Tse’s adhesive composition “may
be a degraded (i.e., vis-broken) polypropylene-based polymer described
herein.” Tse ¶ 48. Tse thus discloses an “unmodified” propylene-based
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polymer, as defined in Appellant’s Specification, by indicating that
degradation of the propylene-based polymer by treatment with a free radical
initiator is optional.
Tse discloses that the hot melt adhesive composition may include
from about 1% to about 50% by weight of one or more waxes, which may be
the same or different, and Tse discloses four preferred classes of suitable
waxes, which include Fischer-Tropsch waxes and polyethylene waxes (non-
functionalized waxes). Tse ¶¶ 140, 142, 147. The wax content range
disclosed in Tse of from about 1% to about 50% by weight overlaps the
range of “at least 15% by weight non-functionalized wax” recited in claim 1,
rendering the recited range prima facie obvious. Peterson, 315 F.3d at
1329–330.
These disclosures in Tse would have suggested a hot melt adhesive
composition having all the features recited in claim 1 to one of ordinary skill
in the art before the effective filing date of Appellant’s application,
rendering the claimed composition prima facie obvious.
Although Appellant argues, in the context of addressing the rejection
of claim 1 as anticipated by Tse, that one of ordinary skill in the art would
have had to selectively pick and choose from the various passages in Tse to
arrive at the composition of claim 1, including selecting a wax component
from among more than eight classes of components that Tse discloses may
optionally be included in Tse’s adhesive composition (Appeal Br. 12–15),
such picking and choosing from among Tse’s disclosures is “entirely proper
in the making of a [section] 103[] obviousness rejection.” In re Arkley, 455
F.2d 586, 587–88 (CCPA 1972); see also Merck & Co., Inc. v. Biocraft
Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“That the ‘813 patent
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discloses a multitude of effective combinations does not render any
particular formulation less obvious. This is especially true because the
claimed composition is used for the identical purpose.”).
Appellant also argues when addressing the anticipation rejection that
Tse does not teach that Tse’s adhesive composition should include 1) at least
15% by weight non-functionalized wax that 2) exhibits a heat of fusion
greater than 60 J/g and a viscosity of no greater than 750 cP, 3) is selected
from the group consisting of polyethylene wax, Fischer Tropsch wax, and
combinations thereof, and 4) includes two different non-functionalized
waxes, as required by claim 1. Appeal Br. 13.
As discussed above, however, Tse disclose that the hot melt adhesive
composition of Tse’s invention may include one or more waxes in an
amount that overlaps the wax content range recited in claim 1, and Tse
discloses that the waxes included in the composition may be the same or
different. As also discussed above, Tse discloses that Fischer-Tropsch
waxes and polyethylene waxes are two of the four preferred waxes suitable
for use as the wax component in Tse’s adhesive composition. We find no
disclosure in Tse indicating that any particular Fischer-Tropsch or
polyethylene wax would be unsuitable for use in Tse’s adhesive
composition. Consequently, Tse’s general disclosure of the suitability of
Fischer-Tropsch waxes and polyethylene waxes as the wax component in
Tse’s adhesive composition would have suggested that any and all Fischer-
Tropsch waxes and polyethylene waxes could be used successfully in the
composition for their intended purpose, including those that exhibit a heat of
fusion greater than 60 J/g and a viscosity of no greater than 750 cP at 190°C.
Tse’s disclosures as a whole, therefore, would have suggested a hot
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melt adhesive composition comprising at least 15% by weight of a first non-
functionalized wax and a second non-functionalized wax different from the
first non-functionalized wax, each of which is selected from polyethylene
wax, Fischer Tropsch wax, and combinations thereof, and exhibits a heat of
fusion greater than 60 J/g and a viscosity of no greater than 750 cP at 190ºC,
as required by claim 1.
Appellant further argues when addressing the anticipation rejection
that Tse discloses exemplary functionalized waxes (EPOLENE C-16 and
EPOLENE C-18) that have viscosities greater than 750 cP at 190°C, and
Appellant contends that, consequently, “it is not the case that the term ‘wax’
as used by Tse et al. inherently refers to a polymer that exhibits a heat of
fusion of greater than 60 J/g and a viscosity of no greater than 750 cP at
190°C.” Appeal Br. 13.
Claim 1, however, recites that the claimed adhesive composition
comprises “non-functionalized wax” rather than functionalized wax. Thus,
even if Tse discloses functionalized waxes that have viscosities greater than
750 cP at 190°C as Appellant asserts, such disclosure does not demonstrate
that the non-functionalized waxes disclosed in Tse would not exhibit a heat
of fusion of greater than 60 J/g and a viscosity of no greater than 750 cP at
190°C.
Appellant also argues in the context of addressing the anticipation
rejection over Tse that “none of the example compositions of Tse et al. that
include an unmodified propylene polymer include at least 15% by weight of
a non-functionalized wax selected from the group consisting of polyethylene
wax, Fischer Tropsch wax, and combinations thereof,” but, rather, “the
maximum amount of non-functionalized polyethylene wax or Fischer
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Tropsch wax in the Example compositions of Tse et al. is 8% by weight.”
Appeal Br. 13 (citing Tse Tables 6–14).
Tse’s disclosures are not limited to the experimental examples
provided in the reference, however, and the entirety of Tse’s disclosures
must be considered for what they would have fairly suggested to one of
ordinary skill in the art at the time of Appellant’s invention. In re
Fracalossi, 691 F.2d 792, 9974 n.1 (CCPA 1982) (explaining that a prior art
disclosure is not limited to its examples); In re Applied Materials, Inc., 692
F.3d 1289, 1298 (Fed. Cir. 2012) (“A reference must be considered for
everything that it teaches, not simply the described invention or a preferred
embodiment.”); see also In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)
(“all disclosure of the prior art, including unpreferred embodiments, must be
considered”).
As discussed above, although Tse may not exemplify an adhesive
composition that includes at least 15% by weight of a first non-
functionalized wax and a second non-functionalized wax different from the
first non-functionalized wax, each of which is selected from polyethylene
wax, Fischer Tropsch wax, and combinations thereof, Tse’s disclosures as a
whole nonetheless would have suggested such a composition.
Because Tse would have suggested a hot melt adhesive composition
having all the features recited in claim 1 to one of ordinary skill in the art
before the effective filing date of Appellant’s application, we enter a new
ground of rejection against claim 1 under 35 U.S.C. § 103 as obvious over
Tse. We leave it to the Examiner to consider the patentability of claims 2–
23, which each depend from claim 1, under 35 U.S.C. § 103 as obvious over
Tse alone, or in combination with addition prior art. The fact that we do not
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address claims 2–23 in our new ground of rejection of claim 1 should not be
construed to mean that we consider these claims to be directed to subject
matter patentable over Tse.
Rejection II
We turn now to the Examiner’s rejection of claims 24–26 under
35 U.S.C. § 102(a)(1) as anticipated by, or alternatively, under 35 U.S.C.
§ 103 as obvious over, Tse.
We affirm the Examiner’s rejection of claims 24–26 under 35 U.S.C.
§ 103 as obvious over Tse for the reasons discussed below. We designate
our affirmance as including new grounds of rejection, however, because our
reasons for affirmance differ materially from those expressed by the
Examiner (Final Act. 9–10). In re Leithem, 661 F.3d 1316, 1319 (Fed. Cir.
2011) (“Mere reliance on the same statutory basis and the same prior art
references, alone, is insufficient to avoid making a new ground of rejection
where the Board relies on new facts and rationales not previously raised to
the applicant by the examiner.”).
We need not reach the Examiner’s alternative rejection of claims 24–
26 under 35 U.S.C. § 102(a)(1) as anticipated by Tse, because this rejection
is cumulative to the rejection of these claims under 35 U.S.C. § 103 as
obvious over Tse.
Claims 24 and 25
Claim 24 depends from claim 20, which depends from claim 1.
Claim 20 recites that the hot melt adhesive composition of claim 1
comprises from 45% by weight to about 70% by weight unmodified,
semicrystalline propylene polymer; from about 20% by weight to about 35%
by weight non-functionalized wax; and from about l% by weight to about
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10% by weight functionalized wax. Claim 24 recites that the hot melt
adhesive composition of claim 20 exhibits a heat stress resistance of greater
than 60°C, greater than 50% fiber tear at -18°C, and greater than 50% fiber
tear at 60°C.
Claim 25 depends from claim 20 and recites that the hot melt adhesive
composition of claim 20 exhibits a viscosity of no greater than 1500
centipoise at 149°C.
As discussed above, Tse discloses a hot melt adhesive composition
comprising at least 40% by weight of a propylene-based copolymer having a
crystallinity of from about 0.5% to about 50% (semi-crystalline propylene
polymer), and from about 1% to about 50% by weight of one or more waxes,
such as Fischer-Tropsch waxes and polyethylene waxes (non-functionalized
waxes). Tse ¶¶ 12, 14, 20, 33, 41, 48, 51, 140, 142, 147. Tse further
discloses that the hot melt adhesive composition may comprise from 2% to
10% by weight of one or more functional waxes. Tse ¶¶ 80, 81, 82, 84, 91.
The propylene polymer content disclosed in Tse of at least 40% by
weight encompasses the propylene polymer content range of from 45% by
weight to about 70% by weight recited in claim 1, rendering the recited
range prima facie obvious. Peterson, 315 F.3d at 1329–330. Similarly, the
wax content range disclosed in Tse of from about 20% by weight to about
35% by weight overlaps the range of “at least 15% by weight non-
functionalized wax” recited in claim 1, rendering the recited range prima
facie obvious. Id. And the functionalized wax content range of 2% to 10%
by weight disclosed in Tse overlaps the range of from about l% by weight to
about 10% by weight functionalized wax recited in claim 1, rendering the
recited range prima facie obvious. Id.
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Tse’s disclosures as a whole, therefore, would have suggested a hot
melt adhesive composition having the features recited in claim 20.
Consequently, a reasonable basis exists for finding that such an adhesive
composition suggested by Tse would have the properties recited in claims 24
and 25, and the burden shifts to Appellant to show otherwise. In re Spada,
911 F.2d 705, 709 (Fed. Cir. 1990) (“[W]hen the PTO shows a sound basis
for believing that the products of the applicant and the prior art are the same,
the applicant has the burden of showing that they are not.”); Best, 562 F.2d
at 1255 (“Where, as here, the claimed and prior art products are identical or
substantially identical, or are produced by identical or substantially identical
processes, the PTO can require an applicant to prove that the prior art
products do not necessarily or inherently possess the characteristics of his
claimed product. Whether the rejection is based on ‘inherency’ under 35
U.S.C. § 102, on ‘prima facie obviousness’ under 35 U.S.C. § 103, jointly or
alternatively, the burden of proof is the same, and its fairness is evidenced
by the PTO’s inability to manufacture products or to obtain and compare
prior art products.”).
On the record before us, Appellant does not meet this burden because
Appellant does demonstrate through factual evidence that the adhesive
composition suggested by Tse having the features recited in claim 20 would
not have the properties recited in claims 24 and 25. Appeal Br. 23–26.
Rather, Appellant argues that because Tse does not expressly teach
the composition of claim 24 or claim 25, and because none of the
compositions of Tse’s experimental examples meet the limitations of claims
24 and 25, “there is no composition in Tse [] that could inherently exhibit
the properties required by” claims 24 and 25. Appeal Br. 24–25. Appellant
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argues that Tse does not teach that the properties recited in claim 24 “are
important properties” for Tse’s hot melt adhesive composition, and does not
teach or suggest how to achieve such properties, and, therefore, one of
ordinary skill in the art would not have had a reason to attempt to formulate
a composition having such properties, and would not have known how to do
so. Appeal Br. 24. Appellant argues that “for the skilled artisan to even
attempt to arrive at the composition of claim 25 from Tse [], he or she would
have to make a series of selections” from Tse’s disclosures, and “[t]here is
nothing in Tse [] that provides the requisite teaching, suggestion or reason
that would motivate the skilled artisan to make these selections” necessary to
arrive at the composition of claim 20 (and claim 25). Appeal Br. 25–26.
As discussed above, however, although Tse may not “expressly teach”
a hot melt adhesive composition meeting the limitations of claim 20, from
which claims 24 and 25 depend, Tse’s disclosures as a whole nonetheless
would have suggested such a composition to one of ordinary skill in the art
before the effective filing date of the present application. Any selecting
from among Tse’s related disclosures (discussed above) to arrive at such a
composition is “entirely proper” in the context of an obviousness analysis.
Arkley, 455 F.2d at 587–88.
And although Tse may not explicitly teach that the hot melt adhesive
composition of claim 20 exhibits the properties recited in claims 24 and 25,
the fact that Appellant recognized that such a composition exhibits the
recited properties does not impart patentability to the composition, because a
composition having such properties would have naturally flowed from the
suggestion stemming from Tse’s disclosures as a whole of such a
composition (as discussed above). PAR Pharm., Inc. v. TWI Pharm., Inc.,
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773 F.3d 1186, 1195 (Fed. Cir. 2014) (concept of inherency, when applied to
obviousness, is present “when the limitation at issue is the ‘natural result’ of
the combination of prior art elements”); Ex parte Obiaya, 227 USPQ 58, 60
(BPAI 1985) (“The fact that appellant has recognized another advantage
which would flow naturally from following the suggestion of the prior art
cannot be the basis for patentability when the differences would otherwise
be obvious.”); In re Spada, 911 F.2d 705, 709 (Fed. Cir. 1990) (explaining
that a chemical composition and its properties are inseparable.)
We, accordingly, sustain the Examiner’s rejection of claims 24 and 25
under 35 U.S.C. § 103 as obvious over Tse.
Claim 26
Claim 26 recites “[a] package comprising: the hot melt adhesive
composition of claim 1; a first substrate comprising fibers; and a second
substrate comprising fibers, the second substrate bonded to the first substrate
through the adhesive composition.”
Appellant argues that Tse does not teach the composition of claim 1,
and Tse “also fail[s] to provide any reason, suggestion or motivation for
making the selections required to attempt to arrive at the composition of
claim 1 from which claim 26 depends.” Appeal Br. 26–27.
As discussed above, however, Tse’s disclosures as a whole would
have suggested a hot melt adhesive composition as recited in claim 1. We
further point out that Tse explicitly discloses that Tse’s hot melt adhesive
composition “may be applied to any substrate,” such as spun bonded fibers,
and may be applied using conventional coating techniques. Tse ¶¶ 164, 165.
Tse’s disclosures as a whole, therefore, would have suggested a package as
recited in claim 26,
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We, accordingly, sustain the Examiner’s rejection of claim 26 under
35 U.S.C. § 103 as obvious over Tse.
Rejection III
We next address the Examiner’s rejection of claims 1, 2, 4–11, 13, 14,
18, and 26–28 as anticipated by Rodriguez.
Claims 1, 2, 4–11, 13, 14, 18, and 26
Appellant argues claims 1, 2, 4–11, 13, 14, 18, and 26 together on the
basis of claim 1, to which we accordingly limit our discussion. Appeal Br.
15–18; 37 C.F.R. § 41.37(c)(1)(iv).
Rodriguez discloses an adhesive composition comprising at least 80%
by weight of a base polyolefin polymer that comprises at least 80% by
weight propylene. Rodriguez ¶¶ 20. Appellant does not dispute the
Examiner’s finding that Rodriguez discloses that “the polyolefin base
polymer is unmodified, semi-crystalline propylene polymer.” Compare
Final Act. 5 (citing Rodriguez ¶ 41), with Appeal Br. 15–18.
Rodriguez discloses that the adhesive composition comprises from 1 to 15%
by weight of at least two wax components, which may be “the same or
different types of waxes.” Rodriguez ¶¶ 31, 76. Rodriguez discloses four
preferred classes of waxes, which include Fischer-Tropsch waxes and
polyethylene waxes (non-functionalized waxes). Rodriguez ¶ 78.
Appellant argues that Rodriguez does not disclose that the two waxes
in Rodriguez’s adhesive composition must exhibit a viscosity of no greater
than 750 cPs at 190ºC and heat of fusion greater than 60 J/g. Appeal Br. 16.
Appellant argues that, to the contrary, Rodriguez discloses that the second
wax can have a viscosity as high as 10,000 cP at 190ºC, and at least two of
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the waxes disclosed in Rodriguez exhibit viscosities of greater than 750 cPs
at 190ºC—PEwax 2 and PEwax 3, which have viscosities of 2783 mPa·s3 at
190ºC and 1007 mPa·s at 190ºC, respectively. Appeal Br. 16 (citing
Rodriguez ¶¶ 70, 212 (Table 2)).
Appellant’s arguments do not identify reversible error in the
Examiner’s rejection, for reasons that follow.
Rodriguez’s disclosures directed to suitable waxes for use in
Rodriguez’s adhesive composition are not limited to the PEwax 2 and
PEwax 3 waxes used in Rodriguez’s experimental examples. Rather,
Rodriguez discloses that suitable polyethylene waxes include POLYWAX
3000, and suitable Fischer-Tropsch waxes include BARECO PX-105.
Rodriguez ¶¶ 81, 82. As discussed above, Appellant’s Specification
discloses that POLYWAX 3000 is “[u]seful polyethylene wax” for the hot
melt adhesive composition of Appellant’s invention. Spec. 11, ll. 3–10. The
Specification also discloses that BARECO PX-105 is a “[u]seful Fischer
Tropsch wax” for Appellant’s hot melt adhesive composition. Spec. 11, ll.
23–26. A reasonable basis therefore exists for finding that the POLYWAX
3000 and BARECO PX-105 waxes disclosed in Rodriguez are both “waxes”
as defined in Appellant’s Specification, and, consequently, would exhibit a
viscosity of no greater than 750 cPs at 190ºC and heat of fusion greater than
60 J/g. Best, 562 F.2d at 1255.
Furthermore, although Rodriguez discloses that the viscosity of the
second wax component may be from 190 to 10,000 mPa·s, Rodriguez
nonetheless also explicitly discloses that the viscosity of the second wax
component may be from 200 to 1000 mPa·s at 190°C, and discloses that the

3 One mPa·s is equal to one cP.
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viscosity of the first wax component may be from about 100 mPa·s or less at
190°C. Rodriguez ¶ 71. The overlap between the viscosity ranges disclosed
in Rodriguez and the range of no greater than 750 cPs required by claim 1
anticipates the required viscosity range, due to the lack of any “allegation of
[the] criticality” on the record before us of a viscosity of no greater than 750
cPs. ClearValue Inc. v. Pearl River Polymers Inc., 668 F.3d 1340, 1345
(Fed. Cir. 2012); see also Ineos USA LLC v. Berry Plastics Corp., 783 F.3d
865, 870–71 (Fed. Cir. 2015). For example, Appellant does not direct us to
any evidence demonstrating that an adhesive composition including first and
second non-functionalized polyethylene and/or Fischer Tropsch waxes
having a viscosity outside the range of no greater than 750 cPs would exhibit
different properties or function differently from an adhesive composition
including first and second polyethylene and/or Fischer Tropsch waxes
having a viscosity within this range.
Appellant argues that “the rejection of claim 1 is supported by picking
and choosing from among various passages in the more than 220 paragraphs
that are present in Rodriguez,” and, therefore, “[f]or the skilled artisan to
attempt to arrive at the composition of claim 1 from Rodriguez [], he or she
would have to make a series of selections and decisions,” which
demonstrates that Rodriguez “does not teach the adhesive composition of
claim 1.” Appeal Br. 17–18.
Appellant’s arguments again do not identify reversible error in the
Examiner’s rejection, for the following reasons.
For an anticipation rejection to be proper, the applied prior art
reference “must clearly and unequivocally disclose the claimed [subject
matter] or direct those skilled in the art to the [claimed subject matter]
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without any need for picking, choosing, and combining various disclosures
not directly related to each other by the teachings of the cited reference.” In
re Arkley, 455 F.2d 586, 587–88 (CCPA 1972) (emphasis added).
As discussed above, Rodriguez discloses an adhesive composition
comprising at least 80% by weight of an unmodified, semi-crystalline base
polyolefin polymer comprising at least 80% by weight propylene, and from
1 to 15% by weight of at least two wax components, which may be the same
or different. Rodriguez ¶¶ 20, 31, 76. Rodriguez discloses only four
preferred classes of waxes, which include Fischer-Tropsch waxes and
polyethylene waxes (non-functionalized waxes), and Rodriguez discloses
that suitable polyethylene waxes include POLYWAX 3000, and suitable
Fischer-Tropsch waxes include BARECO PX-105. Rodriguez ¶¶ 78, 81, 82.
These disclosures in Rodriguez are all directly related to each other because
they identify suitable components for use in Rodriguez’s adhesive
composition, and specify the amount of the components that should be
included in the composition. Combining these disclosures in the context of
an anticipation analysis is, therefore, entirely proper, and one of ordinary
skill in the art would at once envisage an adhesive composition having the
features recited in claim 1 from these disclosures in Rodriguez. Kennametal,
Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015)
(“[A] reference can anticipate a claim even if it ‘d[oes] not expressly spell
out’ all the limitations arranged or combined as in the claim, if a person of
skill in the art, reading the reference, would ‘at once envisage’ the claimed
arrangement or combination.”) (alteration in original) (quoting In re
Petering, 301 F.2d 676, 681 (CCPA 1962)); see also Blue Calypso, LLC v.
Groupon, Inc., 815 F.3d 1331, 1344 (Fed. Cir. 2016) (“[A] reference may
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still anticipate if that reference teaches that the disclosed components or
functionalities may be combined and one of skill in the art would be able to
implement the combination.”) (citing Kennametal, 780 F.3d at 1383)).
Contrary to Appellant’s arguments, Rodriguez, therefore, teaches an
adhesive composition as recited in claim 1 within the meaning of 35 U.S.C.
§ 102(a)(1). We, accordingly, sustain the Examiner’s rejection of claims 1,
2, 4–11, 13, 14, 18, and 26 under 35 U.S.C. § 102(a)(1) as anticipated by
Rodriguez.
Claim 27
Independent claim 27 requires the recited hot melt adhesive
composition to comprise, in part, “at least 40% by weight of an unmodified,
semi-crystalline propylene polymer comprising at least 50% by weight
propylene,” and “from 1% by weight to 10% by weight elastomeric block
copolymer comprising styrene.”
The Examiner finds that Rodriguez discloses that the base polymer of
Rodriguez’s adhesive composition is preferably a propylene copolymer, and
finds that Rodriguez discloses an embodiment in which the base polymer
“consists essentially of a blend of two or more propylene copolymers,”
which “may include an isotactic PP [polypropylene] and an elastomer.”
Final Act. 7 (citing Rodriguez ¶ 32); Ans. 7 (citing Rodriguez ¶¶ 33, 40, 42).
The Examiner finds that Rodriguez “discloses that elastomers include, for
example, styrene based elastomers.” Ans. 7 (citing Rodriguez ¶ 32).
As Appellant points out (Appeal Br. 18–19), however, the paragraphs
of Rodriguez cited by the Examiner do not disclose an adhesive composition
comprising at least 40% by weight of a propylene polymer comprising at
least 50% by weight propylene, and from 1% by weight to 10% by weight of
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an elastomeric block copolymer comprising styrene, as required by claim 27.
Rather, paragraph 32 of Rodriguez discloses that suitable base polyolefin
polymers for use in Rodriguez’s adhesive composition include, among
others, “natural rubber or block copolymer elastomers (for example, styrene-
isoprene-styrene block copolymers, styrene-butadiene-styrene block
copolymers, and styrene-butadiene random copolymers,” and
“polypropylene such as polypropylene homopolymers and polypropylene
copolymers.” Paragraph 32 thus indicates that the base polyolefin polymer
in Rodriguez’s adhesive composition can be either a natural rubber or block
copolymer elastomer containing styrene, or can be polypropylene.
Furthermore, paragraph 33 of Rodriguez discloses that “[i]n one
embodiment, base polymer components for use in formulating hot melt
adhesives of embodiments of the invention are propylene homo- and co-
polymers and mixtures thereof, especially propylene copolymers.”
Paragraph 40 discloses that “[i]n another embodiment, the base polymer
component of the adhesive composition consists essentially of a blend of two
or more propylene copolymers.” (emphasis added). And paragraph 42 of
Rodriguez discloses that “[i]n another embodiment the hot melt adhesives
comprise impact copolymers. Impact copolymers are defined to be a
physical or reactor blend of isotactic PP [polypropylene] and an elastomer
such as an ethylene-propylene rubber.”
The paragraphs of Rodriguez cited by the Examiner, therefore,
disclose that the base polyolefin polymer included in Rodriguez’s adhesive
composition can be a blend of two or more polypropylene copolymers, or
can be a natural rubber or block copolymer elastomer containing styrene,
and indicate the adhesive composition can further include an impact
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copolymer, defined as a blend of isotactic polypropylene and an elastomer
such as an ethylene-propylene rubber. We find no disclosure in the portions
of Rodriguez cited by the Examiner indicating that the impact copolymer
can be an elastomeric block copolymer comprising styrene, nor does the
Examiner identify any such disclosure in Rodriguez. Rather, the Examiner
relies on Rodriguez’s disclosure that the base polyolefin polymer can be a
natural rubber or block copolymer elastomer containing styrene when
asserting that Rodriguez discloses that the impact copolymer can be a
styrene-based elastomer.
Consequently, on the record before us, the Examiner does not identify
any disclosure in Rodriguez of including both a propylene polymer
comprising at least 50% by weight propylene and an elastomeric block
copolymer comprising styrene in Rodriguez’s adhesive composition. The
Examiner, therefore, does not provide a sufficient factual basis to establish
that Rodriguez discloses a hot melt adhesive composition having the features
recited in claim 27. We, accordingly, do not sustain the Examiner’s
rejection of claim 27 under 35 U.S.C. § 102(a)(1) as anticipated by
Rodriguez.
Claim 28
Independent claim 28 requires the recited hot melt adhesive
composition to comprise at least 55% by weight of a semi-crystalline
propylene polymer comprising at least 50% by weight propylene, and
greater than 20% by weight wax comprising a first wax selected from the
group consisting of polyethylene wax, Fischer Tropsch wax, and
combinations thereof, and a second wax different from the first wax.
Appellant argues that Rodriguez “expressly and repeatedly” limits the
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total amount of wax that can be present in Rodriguez’s adhesive composition
to 15% by weight. Appeal Br. 19 (citing Rodriguez ¶¶ 17, 63, 72).
Appellant argues that Rodriguez does not teach including greater than 20%
by weight wax in a composition that includes at least 55% by weight of a
semi-crystalline propylene polymer, and argues that none of the
compositions of Rodriguez’s experimental examples include greater than
20% by weight wax and at least 55% by weight of a semi-crystalline
propylene polymer. Appeal Br. 19 (citing Rodriguez Tables 3–5).
As discussed above, however, Rodriguez discloses an adhesive
composition comprising at least 80% by weight of a base polyolefin polymer
comprising at least 80% by weight propylene, and from 1 to 15% by weight
of at least two wax components, which may be “the same or different types
of waxes.” Rodriguez ¶¶ 20, 31, 76. As also discussed above, Rodriguez
discloses four preferred classes of waxes, which include Fischer-Tropsch
waxes and polyethylene waxes (non-functionalized waxes). Rodriguez ¶ 78.
As the Examiner finds, Rodriguez discloses blending the base polymer and
the at least two wax components of the adhesive composition “with a
functionalized polyolefin such that the resulting adhesive composition
comprises . . . up to 10 wt% of the functionalized polyolefin.” Final Act. 7;
Rodriguez ¶¶ 53, 57. As the Examiner also finds, Rodriguez discloses that
the functionalized polyolefin can be a functionalized wax. Final Act. 7;
Rodriguez ¶ 59.
Thus, although Rodriguez limits the amount of the first and second
wax components in Rodriguez’s adhesive composition to 15% by weight as
Appellant argues, Rodriguez discloses that the adhesive composition can
comprise—in addition to the first and second wax components—up to 10%
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by weight of a functionalized wax. One of ordinary skill in the art reading
the above disclosures in Rodriguez would at once envisage an adhesive
composition comprising at least 80% by weight of a base polyolefin polymer
that comprises at least 80% by weight propylene, 1 to 15% by weight of at
least two wax components, one of which is a Fischer-Tropsch wax or a
polyethylene wax (a first wax), and up to 10% by weight of a functionalized
wax (a second wax different from the first wax), despite the fact that
Rodriguez does not explicitly exemplify such a composition. The total
amount of wax in such composition, taking into consideration the upper
limit of the amount of the at least two wax components, and the upper limit
of the amount of the functionalized wax, overlaps the wax content range
recited in claim 28, anticipating the recited range, due to the lack of any
“allegation of [the] criticality” of the recited wax content on the record
before us, and the lack of any evidence demonstrating that a wax content
outside the range recited in claim 28 would exhibit different properties or
function differently from an adhesive composition including wax in an
amount within the recited range. ClearValue, 668 F.3d at 1345; Ineos, 783
F.3d at 870–71. Similarly, the content of the base polyolefin polymer
comprising polypropylene discloses in Rodriguez overlaps the propylene
polymer content range recited in claim 28, anticipating the recited range.
ClearValue, 668 F.3d at 1345.
We, accordingly, sustain the Examiner’s rejection of claim 28 under
35 U.S.C. § 102(a)(1) as anticipated by Rodriguez.
Rejection IV
Finally, we address the Examiner’s rejection of claims 15–17 as
anticipated by, or alternatively, as obvious over, Rodriguez.
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Claim 15 depends from claim 1 and recites that the composition
exhibits a heat stress resistance of greater than 60°C and a set time of no
greater than 1 second. Claim 16 depends from claim 1 and recites that the
composition exhibits a heat stress resistance of greater than 60°C, greater
than 50% fiber tear at 4°C and greater than 50% fiber tear at 60°C, and a set
time of no greater than 1.5 seconds. Claim 17 depends from claim 1 and
recites that the composition exhibits a heat stress resistance of greater than
71°C, greater than 50% fiber tear at 4°C and greater than 50% fiber tear at
71°C, and a set time of no greater than 1.5 seconds.
The Examiner finds that Rodriguez discloses a composition as recited
in claim 1 (as discussed above), but “is silent with regards to the heat stress
resistance of greater than 71°C, greater than 50% fiber tear at 4°C and
greater than 50% fiber tear at 71°C, and a set time of no greater than 1
second” as recited in claims 15–17. Final Act. 9. The Examiner finds,
however, that exemplary adhesive composition “HMA16” disclosed in
Rodriguez is “substantially similar” to the adhesive compositions of
Appellant’s Examples 1–4, and, therefore, “it would naturally flow that the
hot melt adhesive composition [HMA16] of Rodriguez exhibits a heat stress
resistance of greater than 71°C, greater than 50% fiber tear at 4°C and
greater than 50% fiber tear at 71°C, and a set time of no greater than 1
second.” Final Act. 9 (citing Spec. 22, ll. 9–10, and Rodriguez Table 5).
Rodriguez’s exemplary adhesive composition HMA16 is not
“substantially similar” to the hot melt adhesive composition of Appellant’s
claim 1, however, because it includes only a single non-functionalized wax,
rather than first and second non-functionalized waxes as required by claim 1.
Rodriguez ¶ 219 (Table 5). Specifically, although adhesive composition
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HMA16 includes the non-functionalized homopolyethylene wax “PEwax2,”
Table 2 of Rodriguez indicates that PEwax2 has a viscosity of 2783 mPa·s at
190ºC (¶ 212), which is outside the viscosity range of no greater than 750 cP
at 190ºC required by the definition of “wax” set forth in Appellant’s
Specification. Spec. 7, ll. 3–5. And although adhesive composition HMA16
also includes POLWAX 3000, this is the only non-functionalized wax
included in the composition. Rodriguez ¶ 219 (Table 5). Thus, because
adhesive composition HMA16 includes only a single non-functionalized
wax, the composition is not “substantially similar” to the composition of
claim 1. The Examiner, therefore, does not provide a sufficient factual basis
to establish that adhesive composition HMA16 disclosed in Rodriguez
would inherently exhibit the properties recited in claims 15–17.
Furthermore, Appellant identifies data set forth in Appellant’s
Specification demonstrating that the combined properties of a heat stress
resistance of greater than 60°C and a set time no greater than 1 second as
recited in claim 15, the combined properties of a heat stress resistance of
greater than 60°C and a set time no greater than 1.5 seconds as recited in
claim 16, and the combined properties of a heat stress resistance of greater
than 71°C and a set time no greater than 1.5 seconds as recited in claim 17,
are not inherent properties of every hot melt adhesive composition
encompassed by claim 1. Appeal Br. 21–22; Spec. 22, 26 (Tables 1 and 4).
Specifically, the data set forth in Tables 1 and 4 of Appellant’s
Specification show that compositions encompassed by Appellant’s claim 1
do not exhibit a combination of the heat stress resistance and set time values
required by each of claims 15–17. The data thus show that the recited heat
stress resistance and set time values are not inherent properties of the
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composition of claim 1, but, rather, further limit the claimed composition.
On the record before us, the Examiner does not identify any disclosure in
Rodriguez of a composition having the features recited in claim 1 that
exhibits the properties recited in each of claims 15–17, or any disclosure in
Rodriguez that would have suggested such a composition. We, accordingly,
do not sustain the Examiner’s rejection of claims 15–17 under 35 U.S.C.
§ 102(a)(1) as anticipated by, or alternatively, under 35 U.S.C. § 103 as
obvious over, Rodriguez.
CONCLUSION

Claims

35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed New
Ground
1–13,
18–23
102(a)(1) Tse 1–13,
18–23

1–13,
18–23
103 Tse 1
24–26 102(a)(1) Tse4
24–26 103 Tse 24–26 24–26
1, 2, 4–11,
13, 14, 18,
26, 28
102(a)(1) Rodriguez 1, 2, 4–11,
13, 14, 18,
26, 28

27 102(a)(1) Rodriguez 27
15–17 102(a)(1) Rodriguez 15–17
15–17 103 Rodriguez 15–17
Overall
Outcome
1, 2, 4–11,
13, 14, 18,
24–26, 28
3, 12, 15–17,
19–23, 27
1, 24–26

4 As explained above, we do not reach this rejection.
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TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b), which provides that a “new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard under §
41.52 by the Board upon the same record. . . .
Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), to preserve the right to seek review
under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection(s), the
effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment, or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejection, including any timely request for rehearing thereof.
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).
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AFFIRMED IN PART; NEW GROUND OF REJECTION
PURSUANT TO 37 C.F.R. § 41.50(b)