Ex Parte Bagley

Board of Patent Appeals and Interferences

Sep 27, 2002

08668598 (B.P.A.I. Sep. 27, 2002)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.

Paper No. 39

UNITED STATES PATENT AND TRADEMARK OFFICE

__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte BRIAN G. BAGLEY
__________

Appeal No. 2000-1804
Application 08/668,598
__________

ON BRIEF
__________

Before KRATZ, PAWLIKOWSKI, and MOORE, Administrative Patent Judges.

MOORE, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134 from the Examiner’s final rejection of
claims 1-3, 5-7, 20-30, 34, 35, and 37. Claims 4, 8-19, 31-33, 36, 38, and 39 have been
canceled.
CLAIMS

Claim 1 is representative of the claims on appeal and read as follows:
1. A method of treating wood composition boards to reduce the penetration
of water therethrough comprising the steps of:
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Application 08/668,598

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providing a wood composition board;

providing an organic solvent soluble, further curable resin consisting essentially
of:

a ladder organosilsesquioxane polymer of the formula:

wherein R and R’ may be the same or different and are selected from the group
consisting of:

a) aliphatic hydrocarbons of 1-4 carbon atoms;

b) a phenyl radical;

c) a phenyl radical substituted with hydroxy or halogen groups: and

d) halogen groups, provided that R and R’ are not both halogens; w, x, y, and z
are functional groups selected from the group consisting of alkoxy groups of 1-4 carbon
atoms, halogen atoms, hydroxyl groups and silanol groups, and n is an integer ranging
from 10-200, and

optionally including a curing catalyst, inert elements, dyes, coloring agents or
fillers;

coating or impregnating said wood composition board with said organic solvent
soluble, further curable resin; and

curing said organic solvent soluble, further curable resin to reduce the
penetration of water therethrough.

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THE REFERENCES
The Examiner relies on the following references:
Burzynski et al (Burzynski) 3,389,121 Jun. 18, 1968

Bagley et al. (Bagley) 4,835,057 May 30, 1989

Cuthbert et al. (Cuthbert) 5,073,195 Dec. 17, 1991

Stark-Kasley et al. (Stark-Kasley) 5,300,327 Apr. 5, 1994

Kirk-Othmer, Encyclopedia of Chemical Technology, 3d Ed. (c) 1981, Volume 14
“Laminated Wood-Based Composites”, pp. 1-41.1

THE REJECTIONS

Claims 1, 2, 7, 21-28, 34, 35 and 37 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Bagley in view of either Cuthbert or Stark-Kasley, or vice-
versa.
Claims 3, 5, 6, 21, 24, 27-29, 34, 35, and 37 stand rejected under 35 U.S.C.
§103(a) as being unpatentable over Bagley in view of either Cuthbert or Stark-Kasley or
vice versa further in view of Burzynski.
Claims 20 and 30 stand rejected under 35 U.S.C. §103(a) as being unpatentable
over Bagley in view of either Cuthbert or Stark-Kasley or vice versa further in view of
Encyclopedia of Chemical Technology, “Laminated Wood-Based Composites to Mass
Transfer.”

1 Although not listed by the Examiner, this cited reference is of record and utilized in the third rejection.
Accordingly, we list it here for completeness of the record.

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Application 08/668,598

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DISCUSSION
The Invention
The Appellant’s invention relates to a method for treating wood composition
boards to reduce water penetration. The wood composition board is coated or
impregnated with an organic solvent soluble further curable resin consisting essentially
of a ladder organosilsesquioxane polymer of the claimed structure, and then cured.
The Rejection of Claims 1, 2, 7, 21-28, 34, 35, and 37 Under 35 U.S.C. § 103(a)
Claims 1, 2, 7, 21-28, 34, 35, and 37 stand rejected under 35 U.S.C. §103(a) as
being unpatentable over Bagley in view of either Cuthbert or Stark-Kasley or vice versa.
The Examiner has found that Bagley teaches the claimed organosilsequioxane polymer
as a water barrier film on a silica fiber which is coated and cured from a solution at a
desired viscosity prepared by an organic solvent. Bagley, it is said, does not teach
coating a wooden article. (Examiner’s Answer, page 3, line 7 - page 4, line 4). Cuthbert
is said to teach a water-repellent aqueous silane composition which can include
polyorganosilanes and is said to be suitable for wood or masonry. (Examiner’s Answer,
page 4, lines 7 - 15). Stark-Kasley is additionally said to teach a water repellent
organosilicon composition for cellulose or masonry surfaces. (Examiner’s Answer, page
4, line 16 - page 5, line 3).
The Examiner thus concludes that it would have been obvious for one skilled in
the art at the time the invention was made to have treated either Cuthbert or Stark-
Kasley’s wood article with Bagley’s polymer because of the expectation of achieving
similar success in creating a water repellent article. (Examiner’s Answer, page 5, lines
4-8).
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The Rejection of Claims 3, 5, 6, 21, 24, 27-29, 34, 35, and 37 Under 35 USC §103(a)
Claims 3, 5, 6, 21, 24, 27-29, 34, 35, and 37 stand rejected under 35 USC
§103(a) as being unpatentable over Bagley in view of either Cuthberty or Stark-Kasley
or vice versa, further in view of Burzynski.
The Examiner states that Bagley in view of Cuthbert or Stark-Kasley does not
teach a mixture of organopoylsiloxane resins. (Examiner’s Answer, page 5, lines 17-
18). Burzynski is said to teach organopolysiloxane resins which can be utilized as a
coating or film (Examiner’s Answer, page 6, lines 4-8).

The Rejection of Claims 20 and 30 Under 35 U.S.C. §103(a)
Claims 20 and 30 stand rejected under 35 U.S.C. § 103(a) as being unpatentable
over Bagley in view of Cuthbert or Stark-Kasley or vice versa further in view of
Encyclopedia of Chemical Technology, “Laminated Wood-Based Composites to Mass
Transfer.”
The prior art is said by the Examiner to fail to teach the specific type of
woodboard, density, or thickness. However, the Examiner states that the prior art
teaches the application of organopolysiloxane resins to wood to achieve a water
repellent article. The Examiner’s position is that one of skill in the art is presented with
the suggestion that the organopolysiloxane resins are applicable to any porous surface,
in the absence of any showing of criticality (Examiner’s Answer, page 7, line 18 - page
8, line 6).
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The Appellant’s Challenge to the Existence of a Prima Facie Case
The Appellant has provided a Declaration which contests whether a prima facie
case of obviousness exists, and have argued (1) the organosilsesquioxane polymer
disclosed in Bagley is utilized for the coating of glass fibers, not wood and no
reasonable expectation of success would have existed; (2) the organosilsesquioxane
polymer of Bagley is different from the alkyltrialkoxysilane of Cuthbert and Stark-Kasley
and consequently no reasonable expectation of success would have existed; (3) the
coatings of Bagley are very different from the coatings of Cuthbert and Stark-Kasley and
one of ordinary skill in the art would not have had a reasonable expectation that the
coating composition described in the Bagley patent would have been effective for the
same use; (4) there is no suggestion or motivation in the references to combine their
teachings, and there is an express teaching away from the use of an organic solvent.
Initially, we note that the burden is upon the Examiner to set forth a prima facie
case of obviousness. See In re Alton, 76 F.3d 1168, 1175, 37 USPQ2d 1578, 1583
(Fed. Cir. 1996). More specifically, it is the burden of the Examiner to establish why one
having ordinary skill in the art would have been led to the claimed invention by the
reasonable teachings or suggestions found in the prior art, or by a reasonable inference
to the artisan contained in such teachings or suggestions. In re Sernaker, 702 F.2d
989, 995, 217 USPQ 1, 6 (Fed. Cir. 1983). In addition, the Federal Circuit states that
"[t]he mere fact that the prior art may be modified in the manner suggested by the
Examiner does not make the modification obvious unless the prior art suggested the
desirability of the modification." In re Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d
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Application 08/668,598

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1780, 1783-84 n.14 (Fed. Cir. 1992), citing In re Gordon, 733 F.2d 900, 902, 221 USPQ
1125, 1127 (Fed. Cir. 1984).
It is not in dispute that the organosilsesquioxane polymer as claimed in the
method claims is disclosed in Bagley (column 2, lines 18-41) as suitable for use as a
coating/cladding for an optical fiber which is silica or silica-based, a chalcogenide, or a
light or heavy metal halides (column 2, lines 56-61). The coating is effective as a water
barrier at high temperatures and humidity (column 1, lines 25-27 and 65-67).
Nor is it in dispute that the secondary references teach that aqueous solutions
including alkylalkoxysilanes impart water repellent properties when applied to wood,
concrete, mortar and stone. (See, e.g. Cuthbert, column 4, lines 46-49; Stark-Kasley,
column 1, lines 45-51).
However, the Examiner and the Appellant disagree on whether the art can be
combined; and, if combined, whether one of skill in the art would have a reasonable
expectation of success.
The Examiner is of the opinion that the water repellent coatings of the prior art
are:
...from the same “family” of polymers and one skilled in the art would have been
suggested to look elsewhere in this “family” for other polymers which would also
be applicable to wooden surfaces. In addition, the primary reference teaches the
claimed coating composition on a glass surface, one skilled in the art would have
an expected success for coating a wooden surface since the wooden surface is
porous and rough compared to that of a glass fiber. Furthermore, the prior art
and Appellant’s own disclosure teach that the claimed polymer coating can be
derived from alkyltriethoxysilanes which are similar to those described in the
secondary references. (Examiner’s Answer, page 9, line 14 - page 10, line 2).

The Appellant, on the other hand, states in the Rule 132 Declaration of record
that:
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The organosilsesquioxane polymer described in the Bagley patent is a true
polymer: it consists of large molecules of recurring long chain structural units,
each molecule having a molecular weight of about 10,000. It is prepared by
reacting an alkyltrialkoxysilane precursor at elevated temperatures for many
hours. The organosilsesquioxane polymer is a solid at room temperature. It is
soluble in organic solvents, and insoluble in water. In contrast, the
alkyltrialkoxysilane described in the Cuthbert and Stark-Kasley patents consists
of molecules having low molecular weights. The alkyltrialkoxysilane is a liquid at
room temperature. It is soluble in water. (Declaration of Crosby, page 3,
paragraph 4, lines 7 - 15).

We are of the opinion that, on balance, the Examiner has not carried his burden
of showing a prima facie case of obviousness. While it is indeed true that the polymers
are related, it appears to us that the relationship is more of a precursor-final product
relationship than an analogous structure relationship. In Bagley, it appears that the
claimed organosilsesquioxane polymer is prepared by the hydrolysis and condensation
of methyltriethoxysilane (column 3, lines 37-39), and we note that the claims of the
instant application require n to be between 10 and 200, which indicates a significant
number of repeating units must be present.
The Stark-Kasley reference discloses an aqueous solution of water, an
alkyltrialkoxysilane or blend of alkyltrialkoxysilanes each with C1 to C10 alkyl groups on
silicon, a silane coupling agent having a reactive organofunctional group which is an
amino or quaternary ammonium functional group, and a blend of petroleum and
synthetic waxes. (Stark-Kasley, column 1, line 65 - column 2, line 7). The Cuthbert
reference discloses an aqueous solution of a water soluble coupling agent and an
alkyltrialkoxysilane. (Cuthbert, column 3, lines 43-50).
The Examiner has not provided us with any evidentiary or factual support to
undergird his conclusion that the inclusion of the compounds from the references within
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Application 08/668,598

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this “family” renders the claimed subject matter obvious. Furthermore, we agree with
the Appellant that the ingredients in the coating compositions of the references are
substantially different from the claimed composition.
The Examiner bears the burden of proof in the first instance, and for the reasons
noted above, on balance we conclude that this burden has not been shown. We are
not convinced that one of ordinary skill in the art would be sufficiently motivated or
taught that the higher molecular-weight polymer of Bagley could be incorporated into a
coating composition such as that disclosed in Cuthbert or Stark-Kasley with a
reasonable expectation of success.
Accordingly, we reverse the rejection of claims 1, 2, 7, 21-28, 34, 35, and 37
under 35 U.S.C. §103(a). As the remaining two rejections under 35 U.S.C. §103(a) are
founded upon this rejection, we reverse them for the same reasons as stated above.

Summary of Decision
The rejection of claims 1, 2, 7, 21-28, 34, 35 and 37 under 35 U.S.C. § 103(a) as
being unpatentable over Bagley in view of either Cuthbert or Stark-Kasley, or vice-
versa, is reversed.

The rejection of claims 3, 5, 6, 21, 24, 27-29, 34, 35, and 37 under 35 U.S.C.
§103(a) as being unpatentable over Bagley in view of either Cuthbert or Stark-Kasley or
vice versa further in view of Burzynski is reversed.

Appeal No. 2000-1804
Application 08/668,598

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The rejection of claims 20 and 30 under 35 U.S.C. §103(a) as being
unpatentable over Bagley in view of either Cuthbert or Stark-Kasley or vice versa further
in view of Encyclopedia of Chemical Technology, “Laminated Wood-Based Composites
to Mass Transfer” is reversed.

REVERSED

)
PETER F. KRATZ )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
)
BEVERLY A. PAWLIKOWSKI )
Administrative Patent Judge ) APPEALS AND
)
)
) INTERFERENCES
JAMES T. MOORE )
Administrative Patent Judge )

Appeal No. 2000-1804
Application 08/668,598

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