Ex parte Toy et al.

Board of Patent Appeals and Interferences

Mar 8, 2002

08735925 (B.P.A.I. Mar. 8, 2002)

1
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not written for publication and is not binding precedent of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. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte HILTON T. TOY, DAVID L. EDWARDS,
DA-YUAN SHIH, and AJAY P. GIRI
__________
Appeal No. 1999-1143
Application No. 08/735,925
__________
ON BRIEF
__________
Before KIMLIN, GARRIS, and DELMENDO Administrative Patent
Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the refusal of the
examiner to allow claims 22, 23, 26-29 and 31-34 as amended
subsequent to the final rejection. These are all of the
claims remaining in the application.
Appeal No. 1999-1143
Application No. 08/735,925
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The subject matter on appeal relates to a method for
bonding a silicon-containing polymeric adhesive to a nickel
metal surface having poor direct adherability to the adhesive
which comprises depositing on the nickel metal surface a thin
adherent metal film of chromium, molybdenum, tungsten and
alloys thereof, contacting an uncured silicone elastomeric
material to the thin adherent metal film and solidifying the
silicone elastomeric material, wherein the thin adherent metal
film has a thickness effective to bond the surface to the
adhesive (e.g., see claim 22). The appealed subject matter
also relates to the product resulting from this process (e.g.,
see claim 32). This appealed subject matter is adequately
illustrated by independent claim 22 which reads as follows:
22. A method for bonding a silicon-containing polymeric
adhesive to a metal having poor direct adherability to such
polymeric adhesive, comprising the steps of:
(a) providing an uncured silicone elastomeric material
and a substrate comprising a substrate surface containing
nickel;
(b) depositing a thin adherent metal film on said
substrate surface, wherein said thin adherent metal film is a
metal selected from the group consisting of chromium, Mo, and
W, and alloys thereof;
(c) contacting said silicone elastomeric material to said
thin adherent metal film; and
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Application No. 08/735,925
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(d) solidifying said silicone elastomeric material,
wherein said thin adherent metal film has a thickness
effective to bond said substrate surface to said polymeric
adhesive.
The references relied upon by the examiner in the
rejections before us are:
Benko 4,446,197 May 1, 1984
Obayashi et al. (Obayashi) 4,749,625 Jun. 7, 1988
Yoshikawa et al. (Yoshikawa) 4,872,932 Oct. 10, 1989
Claims 22, 23, 26-28 and 31-34 are rejected under 35
U.S.C.
§ 102(b) as being anticipated by or in the alternative under
35 U.S.C. § 103 as being obvious over Obayashi.
Claim 27 is rejected under 35 U.S.C. § 103 as being
unpatentable over Obayashi in view of Yoshikawa or Benko, and
claim 29 is similarly rejected as being unpatentable over
Obayashi in view of Benko.
We refer to the brief and reply brief and to the answer
for a complete exposition of the opposing viewpoints expressed
by the appellants and by the examiner concerning the above
noted rejections.
OPINION
We cannot sustain any of these rejections.
Appeal No. 1999-1143
Application No. 08/735,925
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It is well settled that, for a section 102 rejection to
be proper, the prior art reference must clearly and
unequivocally disclose the claimed invention or direct those
skilled in the art to the invention without any need for
picking, choosing and combining various disclosures not
directly related to each other by the teachings of the cited
reference. In re Arkley, 455 F.2d 586, 587, 172 USPQ 524, 526
(CCPA 1972). Here, there is nothing in the teachings of
Obayashi which “clearly and unequivocally” directs those
skilled in the art to make the specific selections of
materials for patentee’s amorphous metal core layer,
electroconductive metal plating layer, and polymeric coating
layer which would be necessary in order to result in a method
and product of the type claimed by the appellants. Therefore,
we cannot sustain the examiner’s section 102(b) rejection of
claims 22, 23, 26-28 and 31-34 as being anticipated by
Obayashi.
As for the section 103 rejection based on Obayashi, we
understand the examiner’s point that patentee discloses the
individual materials involved in the appellants’ claimed
method and product. In our view, however, this fact merely
Appeal No. 1999-1143
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establishes that it is possible to reproduce the here claimed
method and product by appropriately selecting and
appropriately combining particular materials from patentee’s
extensive listings. However, the mere fact that the prior art
could be modified so as to result in a claimed invention would
not have made the modification obvious unless the prior art
suggested the desirability of the modification. In re Gordon,
733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). For
this reason and because we agree with the appellants that
Obayashi would not have suggested the aforementioned
selections and combinations needed to achieve the here claimed
invention, we also cannot sustain the examiner’s section 103
rejection of claims 22, 23, 26-28 and 31-34 as being obvious
over Obayashi.
As correctly argued by the appellants, the above
discussed deficiency of Obayashi is not supplied by the
Yoshikawa or Benko references, and the examiner has not relied
upon these references for this purpose. It follows that we
cannot sustain the examiner’s section 103 rejection of claim
27 over Obayashi in view of Yoshikawa or Benko or his section
103 rejection of claim 29 over Obayashi in view of Benko.
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Application No. 08/735,925
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The decision of the examiner is reversed.
REVERSED
Edward C. Kimlin )
Administrative Patent Judge )
)
)
)
Bradley R. Garris ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Romulo H. Delmendo )
Administrative Patent Judge )
BRG:tdl
Appeal No. 1999-1143
Application No. 08/735,925
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