Ex parte YIP et al.

Board of Patent Appeals and Interferences

Nov 2, 1999

08095369 (B.P.A.I. Nov. 2, 1999)

Application for patent filed July 20, 1993. According1
to appellants, this application is a continuation of
Application No. 07/823,409 filed January 21, 1992, now
abandoned.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was
not written for publication in a law journal and (2) is not
binding precedent of the Board.
Paper No. 33
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte CHAK-KAI YIP, JAMES W. GORDON and NABIL SABA
____________
Appeal No. 1996-1566
Application No. 08/095,3691
____________
HEARD: October 18, 1999
____________
Before GARRIS, PAK and LIEBERMAN, Administrative Patent
Judges.
LIEBERMAN, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 1996-1566
Application No. 08/095,369
2
This is an appeal under 35 U.S.C. § 134 from the
examiner’s refusal to allow claims 2 and 4 through 24 which
are all the claims in the application.
THE INVENTION
The invention is directed to a four component composition
for use as a curing agent and adhesion promotion in a hydroxy
terminated diorganosiloxane coating. The composition contains
a first component which is an epoxy resin selected from a
bisphenol epichlorohydrin reaction product, an epoxylated
novolac and a cycloaliphatic epoxide. The second, third and
fourth components respectively are an amine functional silane
of a specific formula, a catalytic amount of an organic
metallic compound and a solvent.
THE CLAIM
Claim 23 is illustrative of appellants’ invention and is
reproduced below:
23. A composition consisting essentially of
(A) an epoxy resin selected from the group consisting of
Appeal No. 1996-1566
Application No. 08/095,369
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(I) a product of the reaction of epichlorohydrin and
bisphenol which product has the formula,
wherein n is a number in the
range of 0 to 15;
(ii) a novalac resin which resin has the
formula,
wherein p is a number in the range of 1 to 2; and
(iii) a cycloaliphatic compound which compound has
the formula,
Appeal No. 1996-1566
Application No. 08/095,369
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(B) an amine functional silane of the formula,
R NHR Si(R ) (OR )4 3 2 1b 3-b
wherein R and R are monovalent hydrocarbon groups of 11 2
to 4 carbons and b has a value of 0 or 1; R is a divalent3
hydrocarbon group of the formula,
(CH )2 x
wherein x is an integer of from 3 to 10; and R is4
selected from the group consisting of hydrogen, a monovalent
hydrocarbon group of one to four carbons and a group of the
formula,
R NHR5 3
wherein R is as defined above and R is hydrogen or a3 5
monovalent hydrocarbon group of 1 to 4 carbons
wherein the ratio of the number of amino groups in the amine
functional silane to the number of epoxy groups in the epoxy
resin is int he range of 1:1 to 5:1;
(C) a catalytic amount of an organometallic compound;
and
(D) an organic solvent
which composition, when added to an OH-terminated
polydiorganosiloxane, then applied to an EPDM-base rubber
surface and cured thereon, forms an abrasion resistant film
adherent to the surface and having good freeze-release
properties.
THE REFERENCES OF RECORD
Appeal No. 1996-1566
Application No. 08/095,369
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As evidence of obviousness, the examiner relies upon the
following references:
Murphy 3,341,486 Sep. 12,
1967
Endo 4,233,428 Nov.
11, 1980
Sumida 4,252,933 Feb. 24,
1981
THE REJECTION
Claims 2 and 4 through 24 stand rejected under 35 U.S.C.
§ 103, as being unpatentable over Endo in view of Sumida taken
further with Murphy.
OPINION
We have carefully considered all of the arguments
advanced by appellants and the examiner and agree with
appellants that the aforementioned rejections are not well
founded. Accordingly, we will not sustain the rejections.
“[T]he examiner bears the initial burden, on review of
the prior art or on any other ground, of presenting a prima
facie case of unpatentability.” See In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
Appeal No. 1996-1566
Application No. 08/095,369
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The examiner relies upon a combination of three
references to disclose the claimed subject matter. It is the
examiner’s position that one skilled in the art would have
found it obvious to add an organometallic catalyst taught in
Sumida to the composition of Endo as an adhesion promoter for
a hydroxy terminated polydiorganosiloxane. See Answer, page
5. We disagree.
Endo discloses a primer composition on a substrate
material. See column 1, lines 6 - 8. The primer includes an
epoxy resin, an amino group containing silane, an additional
organic silicon containing compound, a silane containing a
mercapto group and an organic solvent. See Endo, column 1,
line 55 through column 2, 12. The composition is spread as a
primer on base materials such as glass, aluminum, mortar and
polyester. Thereafter an aminoxy-type silicone sealant is
applied to the primer. See Example 1.
We find that Endo discloses each of the components (A), (B)
and (D) required by the claimed subject matter. There is no
disclosure of component (C), an organometallic compound.
Sumida likewise discloses a primer composition spread on
a substrate as a primer for silicon rubber or an elastomeric
Appeal No. 1996-1566
Application No. 08/095,369
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silicon composition. See column 5, lines 44-49 and column 6,
lines 4-7. The Sumida composition contains a hydroxy end
blocked polydiorganosiloxane, a polyorganohydrogen siloxane
having at least three hydrogen atoms attached to the silicon
atom, and an organometallic catalyst as requisite components
of his invention. See column 4, line 57 through column 5,
line 13. These three components of Sumida interact in a
specific manner. The organometallic compound accelerates the
dehydrogenizing condensation reaction between the hydroxyl
radical on the hydroxy end blocked polyorganosiloxane and the
Si-H bond of the polyorganohydrogen siloxane. See column 4,
lines 56-61. We find no disclosure or suggestion in Sumida
that the organometallic compound in and of itself acts as a
condensation catalyst for hydroxyl end blocked
polyorganosiloxane in the absence of polyorganohydrogen
siloxane. Accordingly, we conclude that there is no rationale
or motivation to add the organometallic compound of Sumida to
the composition taught by Endo as suggested by the examiner.
As for Murphy, we find that patentee is directed to
vulcanized organopolysiloxane molding compositions and methods
for their preparation. The resulting elastomeric polymers are
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Application No. 08/095,369
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free standing cured films and molded articles. See Examples
1-6 and column 8, lines 4-7. We conclude that there is no
suggestion for utilization of the compositions of Murphy or
any component taught therein for either coating or priming.
Based upon the above considerations, we further conclude
that there is no reason why one of ordinary skill in the art
would have been motivated to select the organometallic
compound disclosed by either Sumida or Murphy as a catalyst
for the primer composition taught by Endo.
In view of the above analysis, we have determined that
the examiner’s legal conclusion of obviousness is not
supported by the facts. “Where the legal conclusion [of
obviousness] is not supported by the facts it cannot stand.”
In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA
1967).
Since no prima facie case of obviousness has been
established, we need not address the experimental results
relied upon by appellants. See Brief, page 8. See In re
Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir.
1984); In re Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147
(CCPA 1976).
Appeal No. 1996-1566
Application No. 08/095,369
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Appeal No. 1996-1566
Application No. 08/095,369
10
Decision
The rejection of claims 2 and 4 through 24 under 35
U.S.C.
§ 103, as being unpatentable over Endo in view of Sumida taken
further with Murphy is reversed.
The decision of the examiner is reversed.
REVERSED
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHUNG K. PAK ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
PAUL LIEBERMAN )
Administrative Patent Judge )
Appeal No. 1996-1566
Application No. 08/095,369
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bae
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Kenneth S. Wheelock
General Electric Company
One Plastics Avenue
Pittsfield, MA 01201