Ex Parte Goodwin et al

Board of Patent Appeals and Interferences

May 12, 2006

10148993 (B.P.A.I. May. 12, 2006)

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written for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ANDREW JAMES GOODWIN, DANIEL EDWARD FUTTER,
PATRICK JEAN JACQUES MERLIN, and JAS PAL SINGH BADYAL
____________

Appeal No. 2006-0856
Application No. 10/148,993
____________

ON BRIEF
____________

Before PAK, WALTZ, and TIMM, Administrative Patent Judges.
WALTZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal from the primary examiner’s final rejection of
claims 2, 4 through 8, and 12 through 18, which are the only claims pending in this
application. We have jurisdiction pursuant to 35 U.S.C. § 134.
According to appellants, the invention is directed to a method of forming a
coating on a substrate surface, which coating comprises SiOx groups, by plasma
treatment of the surface where the substrate comprises a blend of an organic polymeric
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material and an organosilicon-containing additive (Brief, page 2).1 Independent claim
18 is illustrative of the invention:
18. A method of forming a coating on a substrate surface which coating
comprises SiOx groups by plasma treatment of the surface, wherein the substrate
comprises a blend of an organic polymeric material and an organosilicon-containing
additive which is substantially non-miscible with the organic polymeric material wherein
the organosilicon-containing additive is selected from the group consisting of
polydimethylsiloxane, α, ω-dihydroxpolydimethylsiloxane, α, ω-divinylpoly-
dimethylsiloxane, a polysilsesquioxane resin, an A-B-A copolymer, a B-A-B copolymer,
an A-B copolymer, an (A-B)n copolymer and an A-graft-B copolymer, wherein A is an
organic polymer, B is a siloxane, and n is a positive integer.

The examiner has relied upon the following references as evidence of
obviousness:
Verzaro et al. (Verzaro) 5,569,497 Oct. 29, 1996
Egitto et al. (Egitto) 5,693,928 Dec. 02, 1997
Appellants rely on the following reference as evidence of non-obviousness:
Eaborn, Organosilicon Compounds, pp. 1-3, 227 and 228, Butterworths Scientific
Publications, London, 1960.

Claims 2, 4-8, and 12-18 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Egitto (Answer, page 4). Claims 7-

1The copy of the Brief in the Image File Wrapper does not have pagination. Therefore,
we have numbered the pages beginning with the “Brief on Appeal” page.
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8 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Egitto in view of
Verzaro (Answer, page 6).
Based on the totality of the record, we affirm both rejections on appeal essentially
for the reasons stated in the Answer, as well as those reasons set forth below.
OPINION
A. The Rejection over Egitto
The examiner presents the findings of fact from the disclosure of Egitto on pages
4-5 of the Answer.
Appellants do not dispute or contest any of the examiner’s factual findings with
the exception of the finding that Egitto shows particular siloxane copolymers (Brief,
page 4; Reply Brief, pages 1-2). Therefore, we limit our discussion to this argument
below. See 37 CFR § 41.37(c)(1)(vii)(2004).
Appellants argue that claim 18 has been limited by the inclusion of specific
siloxane copolymers while Egitto does not show these particular siloxane copolymers
(Brief, page 4). Appellants further argue that Egitto discusses polysiloxanes generally
but instead gives formulas for examples of silanes, not siloxanes (Brief, page 4; Reply
Brief, page 1). Appellants present Eaborn as evidence as to what compounds are
considered as siloxanes and silanes (Brief, page 4) and dispute the examiner’s finding
that methyl siloxanes are disclosed by Egitto (Reply Brief, pages 1-2).
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The examiner states that the definitions set forth in Eaborn are consistent with
the definitions of siloxanes and silanes as disclosed by Egitto (Answer, page 7). We
note that appellants argue that a “siloxane” requires “Si-O-Si” bonding (Reply Brief,
page 1).
We first note that appellants agree that Egitto discloses the use of polysiloxanes
in general as exemplary of the invention (col. 1, ll. 15-20; see the Brief, page 4). We
determine that this disclosure alone would have been sufficient to suggest to one of
ordinary skill in this art the specific polysiloxanes as claimed in claim 18 on appeal. See
In re Corkill, 771 F.2d 1496, 1500, 226 USPQ 1005, 1008 (Fed. Cir. 1985)(obviousness
rejection of claims affirmed in light of prior art teaching that “hydrated zeolites will work”
in detergent formulation, even though “inventors selected the zeolites of the claims from
among thousands of compounds”). Appellants have not explained why this exemplary
teaching of suitable polymers by Egitto would not have suggested the claimed
polysiloxane polymers (e.g., the simplest polymer, polydimethylsiloxane).

Egitto discloses that polysilanes have -Si-Si- repeating units, while polysiloxanes
have -Si-O- repeating units (col. 1, ll. 15-20; col. 2, ll. 1-5). Accordingly, this definition
by Egitto comports with appellants’ definition that polysiloxanes have “Si-O-Si” bonding
since the “repeating unit” as defined by Egitto would have at least a “-Si-O-Si-O-“
bonding. Contrary to appellants’ argument, Eaborn is not directed to any definitions of
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(co)polymers but is limited to monomers (e.g., see page 2). Eaborn teaches that a
silane monomer may contain a Si-Si bond if it is at least a disilane (silane per se is SiH4;
see page 2). Eaborn further teaches that siloxane monomers may contain a Si-O-Si
bonding if the compound is at least a disiloxane (page 2; see also pages 3 and 228).
Similarly appellants’ arguments concerning the specific formulas disclosed by
Egitto are directed to the monomers used by Egitto to form the polysilanes and
polysiloxanes useful in the polymer blend (Brief, page 4; Reply Brief, pages 1-2; see
Egitto, col. 3, ll. 1-8, and col. 4, ll. 1-10). Whether these monomers are characterized as
substituted silanes (with methoxy groups) or siloxanes is not important since the
teachings of Egitto make it

clear that polysiloxanes are the desired product, i.e., a polymer.2
For the foregoing reasons, we determine that the examiner has established a
prima facie case of obviousness in view of Egitto. Based on the totality of the record,
including due consideration of appellants’ arguments, we determine that the
preponderance of evidence weighs most heavily in favor of obviousness within the
meaning of section 103(a). Therefore, we affirm the examiner’s rejection of claims 2, 4-

2We note that appellants discuss Egitto on page 2 of the specification and describe this
patent as containing examples to “a silane or siloxane” (page 2, l. 18).
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8, and 12-18 under section 103(a) over Egitto.
B. The Rejection over Egitto and Verzaro
The examiner finds that the pulsed plasma parameters are not disclosed by
Egitto and thus relies on Verzaro, who teaches an oxygen plasma that is pulsed for
treating polymeric materials, for the advantages of using such a pulsed plasma
(Answer, pages 6-7).
Appellants argue that the two processes are completely different in that Verzaro
teaches a coating deposited by plasma means while the present process exposes a
substrate containing

silicon material to an oxygen plasma to change the surface chemistry of the substrate
(Brief, pages 4-5).
Appellants’ argument is not persuasive. The test of obviousness is not whether
the process of a secondary reference (Verzaro) is the same as the claimed process but
whether the combined disclosures of the applied prior art would have suggested the
claimed subject matter. See In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881
(CCPA 1981). We adopt the findings of fact and conclusion of law as set forth by the
examiner (Answer, pages 6-8). Accordingly, we also affirm the examiner’s rejection of
claims 7-8 under section 103(a) over Egitto in view of Verzaro.
C. Summary and Time Period for Response
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The decision of the examiner is affirmed.

No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR
§ 1.136(a)(1)(iv)(2004).
AFFIRMED

CHUNG K. PAK )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
Appeal No. 2006-0856
Application No. 10/148,993

8
THOMAS A. WALTZ ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
CATHERINE TIMM )
Administrative Patent Judge )

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