Appeal No. 1996-2398
Application 08/140,840
sustain the rejection of the appealed claims under § 103 over Bernard (answer, pages 2-3). It is well
settled that the examiner must satisfy his burden of establishing a prima facie case of obviousness by
showing some objective teaching or suggestion in the applied prior art taken as a whole or that
knowledge generally available to one of ordinary skill in the art would have led that person to the
claimed invention, including each and every limitation of the claims, without recourse to the teachings in
appellant’s disclosure. See generally In re Oetiker, 977 F.2d 1443, 1447-48, 24 USPQ2d 1443,
1446-47 (Fed. Cir. 1992) (Nies, J., concurring); In re Dow Chemical Co., 837 F.2d 469, 473, 5
USPQ2d 1529, 1531(Fed. Cir. 1988)
We construe claim 1 to require that the gel content of the acrylic-based pressure sensitive
adhesive (PSA) is reduced to no more than about 2% by the use of an adequate amount of chain
transfer agent during emulsion interpolymerization, which amount is further specified in claim 4 to be
“more than 0 up to about 2 weight %, based on the weight of the interpolymerizable monomer.” The
examiner finds that Bernard teaches that a chain transfer agent can be used in the preparation of the
emulsion polymerized PSAs disclosed therein, wherein an optimum amount falling within claim 4 is
disclosed, pointing to col. 5, line 64, to col. 6, line 5. Even though the examiner finds that the reference
does not specifically state the purpose of the chain transfer agent, the examiner concludes that “the
reference teaches [the use of a] chain transfer agent to lower molecular weight which reduces gel”
(answer, page 3). In response to the prima facie case of obviousness made out by the examiner,
appellant submits that Bernard teaches that the emulsion polymerized PSAs “have a gel content of 50-
70% (col. 2, line 17, col. 4, line 47 and col. 7 (claim 1) lines 51-53)” (brief, page 2). Appellant points
out in this respect that the reference specifies the use of diesters of a dicarboxylic acid and a reactive
surfactant in preparing the emulsion polymerized PSAs and further submits that it is apparent from the
reference that “sterilization-resistant crosslinking is built into the polymer during polymerization” (id.).
In view of the argument and evidence of nonobviousness submitted in rebuttable by appellant,
the patentability of the claimed invention must be determined based on the totality of the record, and if it
is found that appellant’s argument rebuts the examiner’s initial prima facie case based on the applied
reference(s), the examiner must again establish a prima facie case of nonobviousness over the
- 2 -
Page: Previous 1 2 3 4 Next
Last modified: November 3, 2007