Ex Parte Eckhardt, et al. (3M Innovative Properties)

USPTO Appeal Decision regarding U.S. Ser. No. 14/443,426

Appeal 2020-003463

April 15, 2021

Brief Summary:  Anticipation rejections reversed due to “picking and choosing from various lists” in the prior art.

Summary:  3M appealed anticipation rejection of its claims to, e.g., “[a] multilayer PSA assembly comprising…a propylheptyl acrylate adhesive copolymer layer comprising” specific amounts of 2-propylheptyl acrylate, “a second non-polar monomer”, “a third polar acrylate monomer”, a particular type of “tackifying resin”, and “a second acylate pressure sensitive adhesive foam layer.”  The claims were rejected under section 102(a) as being “anticipated by Bartholomew and Zajackowski (incorporated by reference in Bartholomew)” (both US patent publications).   3M argued the rejection was improperly based on the selection of individual components from several lists of the cited references (e.g., 1600 or more “possible combinations”), citing Impax (FC 2008 (no anticipation where one would need to pick from “hundreds or thousands of compounds” to arrive at the claimed invention)).  The Board agreed with 3M and reversed the anticipation rejections due to “picking and choosing from various lists in Bartholomew” and a failure of the Examiner to “adequately explain[] how Bartholomew anticipates the claims”.  The Board explained that “anticipation under § 102 can be found only when the reference discloses exactly what is claimed and that where there are differences between the reference disclosure and the claim, the rejection must be based on § 103 which takes differences into account” (Titanium Metals Corp. v. Banner, 778 F.2d 775 (Fed. Cir. 1985) (“Claims to titanium (Ti) alloy with 0.8% nickel (Ni) and 0.3% molybdenum (Mo) were not anticipated by, although they were held obvious over, a graph in a Russian article on TiMo-Ni alloys in which the graph contained an actual data point corresponding to a Ti alloy containing 0.25% Mo and 0.75% Ni.”)).  The Board did issue a new rejection based on these references for obviousness (section 103).

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