Ex parte Lower

Board of Patent Appeals and Interferences

Mar 6, 2000

08524661 (B.P.A.I. Mar. 6, 2000)

Application for patent filed 8 September 1995. The real party in interest is The1
Dow Corning Corporation.
The opinion in support of the decision being
entered today is not binding precedent of the Board.
Paper 12
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte LOREN D. LOWER

_____________
Appeal 1997-2575
Application 08/524,6611
______________
Before: DOWNEY and WILLIAM F. SMITH, Administrative Patent
Judges, and McKELVEY, Senior Administrative Patent Judge.
McKELVEY, Senior Administrative Patent Judge.
DECISION ON APPEAL UNDER 35 U.S.C. § 134
The appeal is from a decision of the Primary Examiner
rejecting claims 1-20. We reverse.
A. Findings of fact
The record supports the following findings by a
preponderance of the evidence, as well as any findings made in
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Application 08/524,661
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the discussion portion of this opinion.
The invention
1. The invention relates to a composition for room
temperature vulcanizing silicone sealants suitable for formed-
in-place gaskets to be used in contact with hot hydrocarbon
oil (specification, page 1, lines 6-8) and to methods for
making the compositions.
The claims
2. Composition claims 1-10 and method claims 11-20
are in the application.
3. Composition claim 1 reads (paragraph numbering
and matter in brackets added) [portions in bold are
significant with respect to the issues in the appeal]:
A room temperature curing silicone sealant
composition utilizing high moisture fillers, formed by
combining, based on the weight of the silicone sealant
composition:
[1] 25 to 75% diorganosiloxane based polymer
[a] of viscosity 1 Pa@s to 300 Pa@s,
[b] [and having terminal groups,] in which the
terminal groups are selected from the group
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Application 08/524,661
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consisting of silanol and triorganosilyl
groups,
[c] provided that at least 60% of the terminal
groups are silanol groups;
[2] 0 to 25% triorganosilyl endblocked
polydiorganosiloxane fluid of viscosity 0.1 Pa@s
to 10 Pa@s;
[3] 17 to 65% calcium carbonate filler, where the
filler contains greater than 0.25% water by
weight;
[4] 0.01 to 2% tin catalyst;
[5] 0 to 2.0% of an epoxy-functional alkoxysilane;
and
[6] an amount of ketoximosilane of the formula:
R4b
*
R Si(ON=CR R )3 1 2a 4-a-b
[a] where R , R , and R are monovalent1 2 3
hydrocarbons which may be the same or
different from each other, and
[b] a is 0 or 1, and
[c] R is an alkoxy, and4
[d] b is 0 to 2, inclusive,
[e] said amount being calculated so that there
are greater than 1.3 moles ketoximosilane
per silanol [sic-hydroxyl] equivalent in
the diorganosiloxane based polymer [1] and
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Application 08/524,661
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the [water in the] calcium carbonate filler
[3].
4. According to the specification (page 3,
lines 19-21) (emphasis and matter in brackets added):
The correct amount of [ketoximosilane] crosslinker is
determined by the hydroxyl content present from both the
silanol on the base polymer [[1] in claim 1 as reproduced
supra] and the water content of the filler [[3] in claim
1 as reproduced supra].
5. Accordingly, the language "silanol equivalent"
in the language "1.3 moles ketoximosilane per silanol
equivalent in the diorganosiloxane based polymer [1] and the
calcium carbonate filler [3]" is believed to mean "hydroxyl
equivalent."
Examiner's rejection
6. The examiner has rejected claims 1-20 as being
unpatentable under 35 U.S.C. § 103(a) over Beers, U.S. Patent
4,514,529 (1985).
Beers
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7. Beers, like applicant, concerns a "one component
room temperature vulcanizable silicone formed-in-place
gasketing sealant ***" (col. 1, lines 7-8).
8. Using the language of applicant's claim 1, Beers
describes compositions useful as silicone formed-in-place
gasketing sealants which contain the ingredients called for by
applicant's claim 1, as follows:
[1] 25 to 90% [applicant claims 25-75%]
diorganosiloxane based polymer (col. 2,
lines 27-39);
[2] 0 to 40% [applicant claims 0 to 25%]
triorganosilyl endblocked polydiorganosiloxane
fluid (col. 2, lines 40-47);
[3] 5 to 60% [applicant claims 17 to 65%] calcium
carbonate filler (col. 3, lines 7-9) [with
additional details concerning the filler to
follow];
[4] 0.1 to 0.5% [applicant claims 0.01 to 2%] of a
tin catalyst (col. 3, lines 4-6);
[5] no [applicant claims 0 to 2.0%] epoxy-functional
alkoxysilane is described as being present by
Beers; and
[6] about 2 to about 15% of ketoximosilane [with
additional details concerning the ketoximosilane
to follow].
Appeal 1997-2575
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9. With respect to the calcium carbonate filler,
Beers states (col. 5, lines 37-52):
Another important aspect of the present invention is
the use of a hydrophobic calcium carbonate filler which
imparts a desirable oil stabilizing effect as well as a
low degree of reinforcement to the polymer to allow for
the incorporation of low modulus properties. The amount
of hydrophobic filler generally ranges from about 5 to
about 60 percent [applicant claims 17 to 65%] by weight
with from about 15 to about 45 percent by weight based
upon a total composition weight being preferred. It is
important to the present invention that the water level
of the hydrophobic filler be very low. Accordingly, if
small amounts of filler are utilized, that is 15 percent
by weight or less, the water level can range up to 0.4
percent by weight based on the total weight of
hydrophobic filler. Generally, the water content is 0.2
percent by weight or less with from about 0.1 percent by
weight or less being preferred.
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10. With respect to the ketoximosilane (which Beers
calls an oxime), Beers states, inter alia (col. 5, lines 24-
36):
The amount of the oxime curing agent ranges from about 2
to about 15 percent by weight with from about 4 to about
8 percent by weight being preferred based upon the total
weight of the composition.
*****
In order to insure that gellation or viscosity increases
do not occur, an excess of oxime crosslinking agents to
silanol in the base polymer is utilized as an equivalent
ratio of from about 1.2 to about 4.0 with from about 1.5
to about 2.5 being preferred.
Beers Example 3
11. Notwithstanding other portions of the
description of the Beer invention, Example 3 describes a
silicone sealant having "excellent low modulus properties"
(col. 9, line 8) said to have been made with a calcium
carbonate filler having 0.4% [applicant claims greater than
0.25%] water. The amount of filler in the composition is said
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to have been 28.72% (col. 9, line 27) [applicant claims 17 to
65%].
12. According to Beers, Example 3 demonstrates the
influence of filler type and moisture level on behavior of
final formed-in-place gasket materials (col. 8, lines 66-67).
Differences between claim 1 and Beers
13. Applicant claims that Beers differs from claim 1
as follows:
a. Beers describes the use of a calcium
carbonate filler having less than 0.2% water when the filler
is used in amounts which exceed 15% parts by weight (col. 5,
lines 47-52), whereas applicant claims at least 17 parts by
weight of filler having a water content of more than 0.25%.
See generally Appeal Brief, page 4.
b. Applicant claims the use of an oxime
crosslinking agent in an amount such that the oxime to
hydroxyl equivalents is at least 1.3 whereas Beers is said to
describe the use of a lower amount of oxime. See generally,
Appeal Brief, pages 4-5.
14. The examiner states (Examiner's Answer, page 4):
Appeal 1997-2575
Application 08/524,661
The calculations arriving at the 1.24 figure, which had been presented earlier2
in the prosecution by applicant, are based on an assumption that the Beers
dimethylpolysiloxane having a viscosity of 11,000 Centipoise (in Beers Example 3) has a
molecular weight of 61,000 (Appeal Brief, page 6). We note that at one point in the
prosecution, the examiner observed (Paper 8, page 2):
It is possible that the applicant's assumption made when calculating the
crosslinker to silanol [hydroxyl] content (i.e., molecular weight) are
incorrect.
The examiner apparently did not pursue the molecular weight assumption made by applicant
based on the polymer viscosity. We have no occasion to second-guess either the
applicant or the examiner.
- 9 -
The only distinction between Example 3 and the
applicant's claims is the amount of the ketoximosilane
present [in Example 3 of Beers is] 1.24 moles of
ketoximosilane per mole of silanol in the composition
[whereas applicant claims an amount greater than 1.3].
15. The figure 1.24 is based on calculations made by
applicant and apparently accepted by the examiner. See, e.g.,
Appeal Brief, pages 4-5; Examiner's Answer, page 4.2
16. In his answer, the examiner further explains,
correctly in our opinion, that if the silanol [hydroxyl]
content of water in the filler is not considered, then Beers
ketoximosilane to silanol ratio would be 12.1 which is
manifestly outside the scope of the ketoximosilane to silanol
Appeal 1997-2575
Application 08/524,661
Applicant relies on experimental data set out in the specification in support of3
the appeal. We likewise have relied on the data and found it material in rendering our
decision. Moveover, in reaching our decision, we have made the following assumptions:
(1) the data set out in the specification upon which applicant relies is based on actual
experimentation, (2) the data is accurately set out in the specification and (3) the
data is not based on prophetic examples [see Hoffmann-La Roche, Inc. v. Promega Corp.,
1999 U.S. Dist. LEXIS 19059, Civil Action C-93-1748-VRW (N.D. Cal. Dec. 7, 1999)
(Findings of Fact 56-60, 63-66, 69, 105-106, 112, 131 and 136 and Conclusions of Law 32
and 35)]. We also have relied on the fact that there is no other data known to
applicant or the real party in interest which (1) would tend to contradict the
experimental data set out in the specification and (2) was not called to our attention
in the brief and/or reply brief on appeal [see 37 CFR § 1.56(b)(2)]. If any assumption
is not correct, applicant(s) should immediately notify the board in the form of a
request for reconsideration.
- 10 -
ratio of 1.2 to 4.0 otherwise described by Beers (col. 5,
lines 32-36).
"Criticality" of "greater than 1.3" limitation
17. The examiner is of the view that applicant has
not establish any "criticality" with respect to the limitation
which requires a ketoximosilane to silanol ratio of greater
than 1.3.
18. Initially, the examiner notes that applicant
describes sealants which can be made using a ratio of 1.2
(specification, page 3, last two lines and page 7, lines 4-5).
19. The examiner also took notice of the properties
said to have been obtained with samples A through G3
(specification, page 13, Table 1) vis-a-vis the properties of
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the sealant said to have been obtained in Beer Example 3.
Those properties, include the following:
+)))))))))))))))))))))))0)))))))))))))))0))))))))),
* Property * Applicant * Beers *
/)))))))))))))))))))))))3)))))))))))))))3)))))))))1
* Shore A hardness * 30-35 * 30 *
* * * *
* Elongation * 485-622 * 530 *
* * * *
* Modulus @ 100% * 77-94 * 66 *
* * * *
* Tensile strength * 247-289 * 274 *
.)))))))))))))))))))))))2)))))))))))))))2)))))))))-
20. The examiner acknowledged applicant's argument
that the sealant of Beers Example 3 took several days to
vulcanize whereas applicant's sealants are said to have tack
free times of from 40 to 105 minutes.
21. Accepting arguendo as correct applicant's
calculations showing the use of a ratio of oxime to silanol of
1.24 in Beers Example 3, the examiner reasoned that Beers
advises those skilled in the art that ratios as high as 4.0
may be used to insure that gelation or viscosity increases do
not occur (col. 5, lines 32-36).
22. Based on the evidence, as a whole, the examiner
found that applicant had not established that the 1.3 ratio is
critical. Moreover, according to the examiner, assuming
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arguendo that the 1.3 ratio is critical, it does not render
the claimed subject matter non-obvious in light of Beers'
teaching to use ratios of up to 4.0.
B. Discussion
If the obviousness issue could have been resolved on the
basis of Beers sans Example 3, a decision on the appeal would
be relatively straightforward. There is no suggestion in
Beers to use a calcium carbonate filler having more than 0.2%
water when the filler is used in an amount of more than 15% by
weight (col. 5, lines 47-52). However, in the examiner's
view, what Beers seems to take away in col. 5, lines 47-52 he
gives right back in Example 3. Moreover, the examiner notes
that Beers tells us that if there is a gelation or vulcanizing
problem, the solution is to add more oxime up to a ratio of
4.0 [applicant's ratio being greater than 1.3]. Furthermore,
the examiner notes that many of the properties of the Example
3 sealant are similar to those described by applicant for
compositions made according to the claimed invention. Hence,
the examiner reasons--not without some basis--that if the
product of Example 3 gels in a tube, then the solution to
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keeping the Example 3 composition in liquid form until use is
to increase the oxime ratio.
Applicant has a different reading of Beers. Applicant's
assessment of Beers is that it tells one skilled in the art
how much filler to use and the water content of the filler
when certain amounts of filler are used. Should a problem
develop with gelation, then Beers tells one skilled in the art
how to adjust the oxime ratio to avoid the problem. But,
applicant's view of Beers is that any gelation problem
discussed by Beers is a gelation problem that may occur within
the percentage of filler used and the water content of the
filler which can be used based on that percentage.
Applicant and the examiner have plausible theories for
their respective cases. On balance, however, we are more
inclined on this record to agree generally with applicant's
assessment of what Beers teaches. Beers teaches the amount of
calcium carbonate filler which can be used. When higher
amounts of filler are used, the water content must be low,
i.e., below 0.2% preferably below 0.1%. On the other hand,
when lower amounts of filler are used, the filler may have a
higher water content, i.e., up to 0.4%. Beers does not
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describe the use of a filler having greater than 0.25% water
in combination with an oxime/hydroxyl ratio of 1.3. Example 3
is not a description of Beers invention; rather, it is a
description of the influence of the filler. Thus, the Beers
teaching that gelation can be avoided by increasing the
oxime/hydroxyl ratio is not a teaching of how one goes about
making a better Example 3 product. In this respect, it can be
noted that Beers was aware of all of his teachings and yet
limited his invention to the water contents described in his
specification and set out in claim 1 of his patent. If use of
a higher oxime/hydroxyl ratio to solve any problem encountered
in Example 3 would have been obvious, then Beers as an
inventor (an inventor has more knowledge than a person having
ordinary skill in the art) surely would have described a
broader invention in his patent. Compare In re Kleinman, 484
F.2d 1389, 1392, 179 USPQ 244, 245 (CCPA 1973) (there is no
presumption, rebuttable or not, that the holder of a patent
had constructive or actual knowledge of another patent when he
made the invention; however, it might be significant in
weighing the content of a patent as a reference if it can be
demonstrated that an inventor had actual knowledge of all
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relevant information). In this case, Beers necessarily had
knowledge of all information in his patent and did not
describe or claim an invention which reads on that claimed by
applicant.
For the reasons given, we find that Beers does not teach
one skilled in the art that the oxime/hydroxyl ratio of
Example 3 can be increased to avoid gelation which is said to
have occurred. Rather, one having ordinary skill in the art
would recognize only that the Beers gelation solution of
increasing oxime is limited to gelation problems within the
scope of the compositions he has described and claimed, i.e.,
those having filler contents less than 15 parts by weight and
water contents as high as 0.4% and those having filler
contents greater than 15 parts by weight and water contents no
higher than 0.2%.
C. Decision
The decision of the examiner rejecting claims 1-20 over
Beers is reversed.
REVERSED
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______________________________
MARY F. DOWNEY )
Administrative Patent Judge )
)
)
______________________________)
WILLIAM F. SMITH ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS
AND
)
INTERFERENCES
)
______________________________)
FRED E. McKELVEY, Senior )
Administrative Patent Judge )
Appeal 1997-2575
Application 08/524,661
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cc (via First Class Mail):
DOW CORNING CORPORATION
Patent Department -- Mail CO1232
Midland, MI 48646-0994