Ex parte Bishop

Board of Patent Appeals and Interferences

Mar 21, 2000

08376282 (B.P.A.I. Mar. 21, 2000)

Application for patent filed 20 January 1995. According to applicant, the1
application on appeal is a continuation of application 08/163,946, filed 8 December
1993. The real party in interest is McGean-Rohco, Inc.
The opinion in support of the decision being
entered today is not binding precedent of the Board.
Paper 23
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte CRAIG V. BISHOP

_____________
Appeal 1997-2375
Application 08/376,2821
______________
Before: WILLIAM F. SMITH, Administrative Patent Judge,
McKELVEY, Senior Administrative Patent Judge, and LORIN,
Administrative Patent Judge.
McKELVEY, Senior Administrative Patent Judge.
Decision on appeal under 35 U.S.C. § 134
Upon consideration of the record, it is
ORDERED that the examiner's rejection of claims 1-21
under 35 U.S.C. § 103 over Jex and Plueddemann is reversed.
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Appeal 1997-2375
Application 08/376,282
- 2 -
The claimed compositions cover silane "compositions"
comprising (A) a silane coupling agent and (B) inter alia a
tris(silylorgano)amine ("amine") having the general formula
[(RO) SiR ] N. 3 31
Jex describes, inter alia, compounds which fall within
the scope of applicant's "amine" which are said to be useful
"as finishes for fibrous glass materials prior to
the preparation of reinforced plastics therefrom" (col. 1,
lines 38-39).
Plueddemann describes compositions comprising (A) a
silane coupling agent and (B) a disilyl crosslinker having the
formula
(RO) SiR'Si(OR)3 3
(col. 1, lines 49-55), where RO is a hydrolyzable group. The
Plueddemann compositions are said to be useful as "primers"
(col. 1, line 64) and for pretreating particulate fillers
before compounding (col. 2, lines 1-2).
The examiner found that the utility of the Jex amine and
the Plueddemann compositions were the same. Based on that
Appeal 1997-2375
Application 08/376,282
- 3 -
finding, the examiner concluded that it would have been
obvious to use for that utility a combination of (1) the Jex
"amine" and (2) the Plueddemann composition comprising a (a)
coupling agent and (b) a disilyl crosslinker. In support of
the rejection, the examiner relies on In re Kerkoven, 626 F.2d
846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (it is generally
prima facie obvious to combine two compositions each of which
is taught by the prior art to be useful for the same purpose
in order to form a third composition which is also used for
that purpose).
Although it might be debatable, we will assume that the
examiner is correct in finding that the Jex "amine" and
Plueddemann composition have the same utility. We disagree,
however, that the rationale of Kerkoven applies to the facts
of this case. The disilyl crosslinker of Plueddemann is just
that; it reacts with the coupling agent through the OR groups.
The same would be true of the Jex "amine" which also has OR
groups. Thus, we do not have a case where an applicant has
mixed known ingredients to make a mixture of discrete
ingredients having a utility similar to the utility of each of
the ingredients. When the Jex "amine" is mixed with the
Appeal 1997-2375
Application 08/376,282
- 4 -
Plueddemann compositions, both the Jex "amine" and the
Plueddemann disilyl crosslinker will react with the coupling
agent, and possibly with each other, to form a new "compound."
The result will not be a simple mixture of coupling agent, Jex
"amine" and Plueddemann disilyl compound.
While it is not the basis of the examiner's rejection, we
would also agree with applicant that there is no suggestion,
reason, teaching or motivation on the record for substituting
the Jex "amine" for the Plueddemann disilyl compound to make a
composition comprising a coupling agent and a Jex "amine."
On this record, the examiner's rejection is based on
impermissible hindsight. Accordingly, it must be reversed.
REVERSED.
______________________________
WILLIAM F. SMITH, )
Administrative Patent Judge )
)
)
______________________________)
FRED E. McKELVEY, Senior ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
______________________________)
Appeal 1997-2375
Application 08/376,282
- 5 -
HUBERT C. LORIN )
Administrative Patent Judge )
Appeal 1997-2375
Application 08/376,282
- 6 -
cc (via First Class Mail):
William C. Tritt, Esq.
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