Ex parte Viksne

Board of Patent Appeals and Interferences

May 30, 2001

08656681 (B.P.A.I. May. 30, 2001)

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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and is not binding precedent of the Board.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. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte GEORGE J. VIKSNE
________________
Appeal No. 1998-2653
Application No. 08/656,681
________________
ON BRIEF
________________
Before KIMLIN, PAK and KRATZ, Administrative Patent Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-7,
all the claims in the present application. Claim 1 is
illustrative:
1. A method for reducing the coefficient of friction of a
gasket subject to lateral forces, comprising;
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Application No. 08/656,681
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A. applying to said gasket a curable silicone coating
composition comprising,
i a curable silicone resin
ii a catalyst
iii at least one lubricating filler not soluble in
the coating composition, and
iv optionally a solvent
and
B. curing the silicone coating composition.
The examiner relies upon the following references as
evidence of obviousness:
Viksne 5,368,315 Nov. 29, 1994
Bilgrien 5,399,650 Mar. 21, 1995
Appealed claims 1-7 stand rejected under 35 U.S.C. § 112,
first and second paragraphs. Claims 1-5 stand rejected under
35 U.S.C. § 103 as being unpatentable over Viksne. Also,
claim 6 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Viksne in view of Bilgrien, while claim 7
also stands rejected under § 103 as being unpatentable over
Viksne in view of Bilgrien and the admitted prior art.
Upon careful review of the opposing arguments presented
on appeal, we will not sustain the examiner's rejections.
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Application No. 08/656,681
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We reverse the examiner's rejections of the appealed
claims under 35 U.S.C. § 112, first and second paragraphs, for
the reasons set forth in appellant's Brief. The examiner has
not met the initial burden of demonstrating with objective
evidence or scientific reasoning that one of ordinary skill in
the art would not understand the meaning of the claimed step
"curing." Also, the examiner has not met the initial burden
of establishing that one of ordinary skill in the art would be
unable to practice the claimed invention, including the
claimed curing method and treated talc, without resorting to
undue experimentation. Also, since the examiner states at
page 4 of the Answer that "[t]he MSDS for 'Talc Texas 4411'
makes it clear that this is the proper name of the material,
and therefore is not new matter," we consider the examiner's
rejection under § 112, first paragraph, stated at page 4 of
the final rejection, to have been withdrawn.
We now turn to the examiner's § 103 rejections. We agree
with appellant that Viksne, the primary reference for all the
rejections, fails to disclose or suggest the claimed step of
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applying to a gasket a curable silicone resin. The present
specification states the following at page 4:
The curable silicone resin of the
present invention are those resins known in
the art. Silicone resins are highly cross-
linked high molecular weight siloxane systems
and are thus available as powders or flakes
or as solutions in organic solvents.
In addition, the following is stated at page 7 of appellant's
specification:
The curable silicone composition is
applied to the gasket by brushing, dipping,
or spraying. If the resin, catalyst and
lubricant are mixed together without a
solvent, the resulting dry mixture is applied
by dusting the gasket substrate.
Hence, as urged by appellant, it is clear that when the
claimed language "a curable silicone resin" is read in light
of the present specification, the resin is a solid material,
not a liquid one. On the other hand, Viksne discloses a
coating composition for a gasket comprising polymeric
fluorocarbon particles dispersed in a saturant, which saturant
is absorbed in a resilient material of the gasket, "leaving a
sealant coating 15 of polymeric fluorocarbon on the surface of
the resilient material 14" (column 3, lines 23-25). The
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reference also discloses that the saturant may be any silicone
composition in which the fluorocarbon is dispersed, and the
reference exemplifies silicone fluids which penetrate and are
absorbed by the porous resilient material. Accordingly, based
on the disclosure of Viksne, including Figure 2 which depicts
a gasket coating wherein the surface layer comprises only
polymeric fluorocarbon, we concur with appellant that Viksne
does not teach or suggest the claimed application of a curable
silicone resin.
The secondary references applied by the examiner for
various dependent claims and independent claim 7, including
the admitted prior art, do not alleviate the deficiencies of
Viksne discussed above.
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Application No. 08/656,681
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In conclusion, based on the foregoing, the examiner's
decision rejecting the appealed claims is reversed.
REVERSED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
)
CHUNG K. PAK ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
PETER F. KRATZ )
Administrative Patent Judge )
ECK:clm
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