Ex Parte Wielstra et al

Board of Patent Appeals and Interferences

Jul 6, 2007

10047024 (B.P.A.I. Jul. 6, 2007)

The opinion in support of the decision being entered today
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte YTSEN WIELSTRA
and JOLANDA HARMA SAGITTA WINKEL
____________

Appeal 2007-1903
Application 10/047,024
Technology Center 1700
____________

Decided: July 6, 2007
____________

Before CHUNG K. PAK, CATHERINE Q. TIMM, and
LINDA M. GAUDETTE, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the Examiner’s final rejection of claims 1-11,
the only claims pending in this application. We have jurisdiction over the
appeal pursuant to 35 U.S.C. § 6(b).
We affirm.
Appellants’ invention relates to a method of preparing a lacquer
composition under basic conditions which provides for a controlled coupling
Appeal 2007-1903
Application 10/047,024

of Si-OH groups and prevents premature gelation. Specification 1:23-25.
Independent claims 1 and 10 are illustrative of the invention:
1. A method for producing a lacquer composition, the method
comprising the step of adding silica particles to a reaction mixture
comprising a first organosilane compound and a metal alkoxide under basic
conditions, resulting in a lacquer composition containing silica particles.

10. A starting material composition for obtaining a lacquer
composition, the starting material composition comprising an organosilane
compound, silica particles, a base, and a metal alkoxide.

The references relied upon by the Examiner are:
Nogami US 5,700,391 Dec. 23, 1997
JRS Corp. EP 1 022 318 A2 Jul. 26, 2000
The Examiner made the following rejections:
1. Claims 1, 2, and 4-11 under 35 U.S.C § 102(b) as anticipated by
Nogami.
2. Claims 4 and 5 under 35 U.S.C § 103(a) as unpatentable over
Nogami.
3. Claims 1-11 under 35 U.S.C § 103(a) as unpatentable over JSR,
taken with Nogami.
ISSUE
The Examiner contends that Nogami discloses each and every feature
of Appellants’ claimed invention. Appellants contend that Nogami fails to
anticipate the claims because Nogami does not teach the addition of silica
particles and does not disclose a reaction mixture containing both an
organosilane compound and a metal alkoxide under basic conditions. The
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issue before us is: Has the Examiner shown that the claims are anticipated
by Nogami?
For the reasons discussed below, we answer this question in the
affirmative.
RELEVANT FINDINGS OF FACT
1) Nogami discloses a liquid coating composition comprising:
a solution obtained by hydrolyzing a tetraalkoxysilane of the general
formula
Si(OR)4 (1)
wherein R represents an alkyl group having from 1 to 5 carbon atoms,
in an organic solvent in the presence of an alkaline catalyst;
at least one of (a) a hydrolyzed product of an alkoxysilane of the
general formula
R1nSi(OR2)4-n (2)
wherein R.1 represents a group having 1 to 18 carbon atoms, said
group being an alkyl group, an alkenyl group or an aryl group, R2 represents
an alkyl group having from 1 to 5 carbon atoms, and n represents an integer
of from 0 to 2, and (b) a hydrolyzed product of a tetraalkoxy titanium of the
general formula
Ti(OR3)4 (3)
wherein R3 represents an alkyl group having from 1 to 5 carbon atoms;
an aluminum salt; and
a deposition inhibitor, all of which have been uniformly mixed in an
organic solvent.

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Application 10/047,024

2) Nogami teaches that R1 may be a 3-glycidoxypropyl group.
Col. 3, l. 17.
3) Nogami teaches that the aluminum salt is used to improve
hardness of the film. Col. 3, ll. 28-29.
4) Nogami teaches that the deposition inhibitor prevents
crystallization of the aluminum salt on the surface of the film
during drying. The deposition inhibitor may be N-methyl-
pyrrolidone. Col. 3, ll. 40-44.
5) Nogami states that the deposition inhibitor is used in an
amount at least equal in weight proportion to the aluminum salt in
terms of Al2O3. Col. 3, ll. 45-47.
6) Nogami teaches that the catalyst used for hydrolysis of the
tetraalkoxysilane of formula (1) must be basic. Col. 3, ll. 55-56.
7) According to Nogami, the hydrolyzed solution obtained by
hydrolyzing the tetraalkoxysilane of formula (1) forms silica
particles as the hydrolyzed product. Col. 4, ll. 21-25.
8) According to Nogami, the hydrolysis of the alkoxysilane of
(2) is conducted in the presence of an acid catalyst and an
aluminum salt. Nogami, col. 4, ll. 29-33.
9) Nogami discloses that:
The tetraalkoxy titanium of formula (3) to be
employed in the present invention may be added to the
alkoxysilane of formula (2) during its hydrolysis. Apart
from this, however, addition of the hydrolyzed solution
of the alkoxysilane of formula (2) to a solution of the
tetraalkoxy titanium in an organic solvent is preferred to
obtain a liquid coating composition having excellent
storage stability. The hydrolyzed solution of the
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alkoxysilane of formula (2) may contain the hydrolyzed
solution of the tetraalkoxysilane of formula (1) formed in
the presence of an alkaline catalyst, with no problem.
Col. 4, l. 65-col. 5, l. 8.

[T]he hydrolyzed solution of the tetraalkoxysilane
of formula (1) may well be added to the mixture of the
hydrolyzed solution of the alkoxysilane of formula (2)
and the solution of the tetraalkoxy titanium in an organic
solvent. In the absence of the alkoxysilane component of
formula (2), as the case may be, a solution of the mixture
comprising water, an aluminum salt and a deposition
inhibitor is first added to the solution of the tetraalkoxy
titanium in an organic solvent and then the hydrolyzed
solution of the tetraalkoxysilane of formula (1) is added
thereto. For the purpose of further improving the storage
stability of the liquid coating composition of the present
invention, containing the tetraalkoxy titanium of formula
(3), it is preferred that the tetraalkoxy titanium is first
subjected to partial inter-esterification with a glycol such
as ethylene glycol, propylene glycol, hexylene glycol or
the like and then mixed with the hydrolyzed solutions of
alkoxysilanes by the above-mentioned methods. Col. 5,
ll. 9-26.

10) In Example 1, Nogami discloses preparation of a solution
by mixing tetraethoxysilane, ethanol, water and aqueous ammonia
as the alkaline catalyst. According to Nogami, silica particles
were formed by hydrolysis. Example 1, Solution (A).
11) In Example 12, Nogami discloses preparation of a titanium-
containing hydrolyzed solution by mixing tetraethoxysilane and
methyltriethoxysilane in N-methylpyrrolidone with a
tetraisopropoxy titanium/propylene glycol slurry. A liquid coating
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composition was prepared by mixing the titanium-containing
hydrolyzed solution with Solution (A) from Example 1.

ANALYSIS AND CONCLUSIONS
Appellants have not presented separate arguments as to any particular
claim. Accordingly, we decide this appeal on the basis of claim 10 as to the
rejection of claims 1, 2, and 4-11 under 35 U.S.C § 102(b) as anticipated by
Nogami and claims 1-11 under 35 U.S.C § 103(a) as unpatentable over JSR,
taken with Nogami. We decide this appeal on the basis of claim 4 as to the
rejection of claims 4 and 5 under 35 U.S.C § 103(a) as unpatentable over
Nogami. 37 C.F.R. § 41.37(c)(1)(vii).
The Examiner found that Nogami discloses preparation of a
composition which is capable of being used as a lacquer coating. The
composition includes a hydrolyzed solution obtained by hydrolyzing a
tetraalkoxysilane of formula (1) in an organic solvent in the presence of an
alkaline catalyst to form silica particles as the hydrolyzed product. Findings
of Fact 1 and 7. The composition further includes a hydrolyzed product of a
tetraalkoxy titanium and/or a hydrolyzed product of an alkoxysilane.
Finding of Fact 1. Thus, the Examiner established a prima facie showing
that Nogami anticipates Appellants’ claimed starting material composition
comprising an organosilane compound, silica particles, a base, and a metal
alkoxide.
Appellants do not contest the aforementioned findings by the
Examiner. Rather, Appellants argue that Nogami fails to anticipate the
claims because (1) Nogami forms silica particles in situ and (2) Nogami
does not disclose a reaction mixture containing both an organosilane
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compound and a metal alkoxide under basic conditions. We do not find
these arguments persuasive since they are not commensurate in scope with
the language of claim 10, i.e., claim 10 does not require the formation of
silica particles in situ and does not require “basic conditions”.
The rejection of claims 1, 2, and 4-11 under 35 U.S.C § 102(b) as
anticipated by Nogami is affirmed. Having concluded that claim 10 is
anticipated by Nogami, we also affirm the rejection of claims 1-11 under
35 U.S.C § 103(a) as unpatentable over JSR, taken with Nogami. Having
concluded that claims 4 and 5 are anticipated by Nogami, we also affirm the
rejection of claims 4 and 5 under 35 U.S.C § 103(a) as unpatentable over
Nogami. See Connell v. Sears Roebuck & Co., 722 F.2d 1542, 1548, 220
USPQ 193, 198 (Fed. Cir. 1983) (quoting In re Fracalossi, 681 F.2d 792,
794, 215 USPQ 569, 571 (CCPA 1982)) (“Anticipation is the epitome of
obviousness.”). See also, In re McDaniel, 293 F.3d 1379, 1383 63 USPQ2d
1462, 1464-65 (Fed. Cir. 2002) (finding that the Board did not err in
selecting claim 53 as representative of a separate § 102(b) rejection of
claims 61-63, because claims 61-63 were rejected over some of the same
references and under the same statutory provision as claim 53, and, therefore
shared common grounds of rejection with Claim 53).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(vi)(effective Sept.
13, 2004).
AFFIRMED

cam
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Appeal 2007-1903
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