Ex Parte Reeve

Board of Patent Appeals and Interferences

Aug 25, 2006

10640367 (B.P.A.I. Aug. 25, 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for publication and is not binding precedent of the Board.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 JOHN A. REEVE
__________

Appeal 2006-2802
Application 10/640,367
Technology Center 1700
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Decided: August 25, 2006
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Before KIMLIN, TIMM, and FRANKLIN, Administrative Patent Judges.
KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-6 and 9-54. Claim 1 is
illustrative:
1. A method of treating a solid substrate, the method comprising:

(I) providing a solid substrate;

(II) spraying the solid substrate with an aqueous solution of
at least one material capable of reacting at or near the solid substrate surface
selected from a group consisting of (i) reactive silanes, (ii) reactive
siloxanes, (iii) hydrolysis products of (i), (iv) hydrolysis products of (ii), and
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(v), combinations of any of (i), (ii), (iii), and (iv), and essentially,
immediately thereafter,

(III) spraying the solid substrate from (II) with a silicon-
containing material capable of reacting at or near the
solid substrate surface selected from the group consisting
of: a. materials containing multi-silanol groups,
b. siliconates,
c. silicates, and,
d. any combinations of a., b., and c.

The Examiner relies upon the following references as evidence:
Gosset US 4,632,848 Dec. 30, 1986
Lohmer US 2002/0048679 A1 Apr. 25, 2002

Appellant’s claimed invention is directed to a method of treating a solid
substrate which comprises spraying the substrate with an aqueous solution of at
least one of (1) reactive silanes, (2) reactive siloxanes, and hydrolysis products of
the silanes and siloxanes, and thereafter spraying the treated substrate with a
silicon-containing material, such as siliconates and silicates. The treatment
provides a protective coating to the substrate.
Appealed claims 1-3, 10-34, 36-38, 40-41, 43-45, 47-48, 50-52 and 54 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over Lohmer in view of
Gosset.1
Appellant has not presented separate arguments with respect to any
particular claim on appeal. Accordingly, all the claims rejected under 35 U.S.C. §
103 stand or fall together with claim 1.

1 The Examiner has withdrawn the rejection of claims 4-6, 9, 20, 26 and 32 under
the judicially created doctrine of obviousness-type double patenting.
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We have thoroughly reviewed each of Appellant’s arguments for
patentability. However, we concur with the Examiner that the claimed subject
matter would have been obvious to one of ordinary skill in the art within the
meaning of Section 103 in view of the applied prior art. Accordingly, we will
sustain the Examiner’s rejections for essentially those reasons expressed in the
Answer.
There is no dispute that Lohmer, like Appellant, discloses a method of
treating a solid substrate which comprises first treating the substrate with a reactive
silane and then coating the treated substrate with a hydrophobic compound for the
purpose of effecting water-repellency. As recognized by the Examiner, Lohmer
does not expressly teach that the hydrophobic compound is one of the recited
compounds, e.g., a silicate. However, Lohmer does teach that the hydrophobic
compound can be one which forms ionic, absorptive, and/or covalent bonds with
the silane treated substrate, such as those compounds which “contain a functional
group such as a carboxylate group by, which the bond to the silane derivative is
developed” ([paragraph 0054]).
Gosset, on the other hand, evidences that it was known in the art to render a
substrate water-repellant by treating it with an aqueous solution comprising a
siliconate or an ammonium salt of a copolymer with a carboxyl group.
Accordingly, based on the collective teachings of Lohmer and Gosset, we agree
with the Examiner that one of ordinary skill in the art would have found it obvious
to select the claimed siliconates as suitable hydrophobic compounds in the process
of Lohmer, with the reasonable expectation that the siliconates would enhance the
water-repellency of the Lohmer coating. Also, we concur with the Examiner that
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Gosset suggests the equivalency of siliconates and carboxylate-group containing
polymers as water-repelling agents, thereby further suggesting that siliconates
would have been selected as hydrophobic compounds which contain the requisite
functional group, such as a carboxylate group, in the process of Lohmer.
The sole argument with respect to the Section 103 rejection advanced by
Appellant is that Gosset teaches an entire coating material which contains the
siliconate, and, therefore, “why would one skilled in the art, having the Lohmer, et
al patent in hand, be directed to segregate the potassium silicate [sic, siliconate] of
Gosset, et al and apply it as a second coating to the treated substrate?” (Br. 5, third
paragraph). However, this argument misses the thrust of the Examiner’s rejection.
The Examiner does not propose segregating the treating composition of Gosset to
use only one of its components but, rather, it is the Examiner’s position that Gosset
evidences that siliconates and polymers containing carboxylate functional groups
were known in the art as water-repelling agents that would be suitable for the
Lohmer process. On the other hand, Appellant has proffered no reason why one of
ordinary skill in the art would have been dissuaded from selecting a siliconate as a
suitable hydrophobic material in the process of Lohmer.
As a final point, we note that Appellant bases no argument upon objective
evidence of nonobviousness, such as unexpected results, which would serve to
rebut the prima facie case of obviousness established by the Examiner.
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In conclusion, based on the foregoing and the reasons well-stated by the
Examiner, the Examiner’s decision rejecting the appealed claims is affirmed.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED

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