Ex Parte Yoneda et al

Board of Patent Appeals and Interferences

Jan 20, 2004

09508080 (B.P.A.I. Jan. 20, 2004)

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written for publication and is not binding precedent of the Board.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. 34

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte TAKASHIGE YONEDA
and
FUMIAKI GUNJI
__________

Appeal No. 2003-1684
Application No. 09/508,080
___________

HEARD: January 8, 2004
___________

Before WARREN, WALTZ, and DELMENDO, Administrative Patent
Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on an appeal under 35 U.S.C. § 134
(2003) from the examiner’s final rejection of claims 17 through
41, which are all the claims pending in the above-identified
application.
The subject matter on appeal relates to a surface treatment
composition comprising a partial hydrolysate of a fluorine-
containing reactive silane having the recited formula (1)
Appeal No. 2003-1684
Application No. 09/508,080

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(claims 17-22 and 34-41), a method of surface treatment of glass
(claims 23-29), a treated substrate (claims 30 and 31), an
article comprising the treated substrate (claim 32), and an
equipment for “transports” comprising the article (claim 33).
According to the appellants (specification, page 3, line 13 to
page 4, line 22), conventional surface treatment compositions
suffer from various drawbacks (e.g., uneven application,
unsatisfactory adhesiveness to a substrate, and “unenduring
antifouling property”), which “are attributed to inappropriately
selected partial hydrolysis conditions which lead to a high
proportion of molecules with low- or high-molecular weights in
the resulting partial hydrolysate and a composition having large
acid and water contents.” The claimed invention, by contrast,
is described as being “excellent in water repellency,
antifouling property, waterdrop rolling property, adhesiveness
(durability), abrasion resistance, chemical resistance and
storage stability.” Further details of this appealed subject
matter are recited in representative claim 17 reproduced below:
17. A surface treatment composition, comprising:
a partial hydrolysate of a fluorine-containing
reactive silane represented by Formula (1):

(Rf-Q-)a(R1)bSi(X1)4-a-b Formula (1)

wherein
Rf is a monovalent fluorine-containing C1-30
organic group;
Appeal No. 2003-1684
Application No. 09/508,080

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Q is a single bond or a bivalent linking group;
R1 is a hydrogen atom or a monovalent C1-16 organic
group;
a is 1 or 2;
b is 0 or 1, and (a+b) is 1 or 2; and
X1 is a hydrolysable group;
wherein a proportion (T1) of a molecule with a
molecular weight of at most 2M in the partial
hydrolysate is less than 70% as calculated from
Formula (A), wherein M is a molecular weight of the
fluorine-containing reactive silane measured by gel
permeation chromatography:

T1(%)=[W2/W1]x100 Formula (A);

wherein
W1 is a total peak area within a molecular weight
range of from 300 to 100000 on a gel permeation
chromatogram of the partial hydrolysate of the
fluorine-containing reactive silane; and
W2 is a total peak area within a molecular weight
range of from 300 to 2M on a gel permeation
chromatogram of the partial hydrolysate of the
fluorine-containing reactive silane;
wherein a proportion (T2) of a molecule with a
molecular weight of at least 6M in the partial
hydrolysate is less than 10% as calculated from
Formula (B):

T2(%)=[W3/W1]x100 Formula (B);

wherein
W1 is a total peak area within a molecular weight
range of from 300 to 100000 on a gel permeation
chromatogram of the partial hydrolysate of the
fluorine-containing reactive silane; and
W3 is a total peak area within a molecular weight
range of from 6M to 100000 on a gel permeation
chromatogram of the partial hydrolysate of the
fluorine-containing reactive silane; and
wherein the partial hydrolysate is obtained by
partial hydrolysis of the fluorine-containing reactive
silane in the presence of water and nitric acid.

Appeal No. 2003-1684
Application No. 09/508,080

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The examiner relies on the following prior art references
as evidence of unpatentability:
Bank et al. 5,225,510 Jul. 6, 1993
(Bank)

Sawada et al. 5,288,891 Feb. 22, 1994
(Sawada)

Horino et al. 5,458,976 Oct. 17, 1995
(Horino)

Asai et al. 5,599,893 Feb. 4, 1997
(Asai)

Claims 17 through 24 and 26 through 41 on appeal stand
rejected under 35 U.S.C. § 103(a) as unpatentable over Bank in
view of Sawada and Asai. (Examiner’s answer mailed Feb. 25,
2003, paper 27, pages 4-10.) In a similar fashion, appealed
claim 25 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Bank in view of Sawada and Asai, as applied to
claims 17 through 24, and further in view of Horino. (Id. at
page 10.)
We reverse both rejections because, in our judgment, the
examiner has failed to establish a prima facie case of
obviousness within the meaning of 35 U.S.C. § 103(a). In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992).
As recited in representative claim 17, all the appealed
claims require the specified partial hydrolysate of a fluorine-
Appeal No. 2003-1684
Application No. 09/508,080

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containing reactive silane to possess a specific molecular
weight distribution defined by proportions T1 and T2. Regarding
this limitation, the examiner alleges that the principal prior
art reference, namely Bank, describes this limitation.1 (Answer,
page 4.)
We note, however, that the examiner has failed to identify
sufficient evidence or scientific reasoning to support the
theory that Bank discloses, or would have suggested to one of
ordinary skill in the art, a partial hydrolysate satisfying the
recited molecular weight distribution. While the examiner does
refer to Bank’s Table 1, column 3, lines 25-41 and 56-66, and
column 7, lines 16-38, there is no accompanying explanation on
how these disclosures in fact support the examiner’s theory.
(Answer, pages 4 and 11.)
The examiner also appears to rely on a theory of
optimization of result-effective variables by routine
experimentation. (Answer, page 8.) The problem with this
approach in this case is that the examiner has not pointed to
any evidence establishing that optimizing the prior art in
accordance with the prior art teachings would necessarily result
in a partial hydrolysate having the recited molecular weight

1 The appellants, on the other hand, dispute the examiner’s
determination. (Appeal brief filed Jan. 15, 2003, paper 26, p.
Appeal No. 2003-1684
Application No. 09/508,080

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distribution. As stated by a predecessor of our reviewing
court, “‘[o]bviousness cannot be predicated on what is
unknown.’” In re Shetty, 566 F.2d 81, 86, 195 USPQ 753, 756-57
(CCPA 1977) (quoting In re Spormann, 363 F.2d 444, 448, 150 USPQ
449, 452 (CCPA 1966)).
The other applied prior art references have been cited for
reasons unrelated to the basic deficiency in the examiner’s
analysis. Accordingly, we see no need to discuss them.
For these reasons and those set forth in the appellants’
briefs, we reverse the examiner’s rejections under 35 U.S.C.
§ 103(a) of: (i) claims 17 through 24 and 26 through 41 as
unpatentable over Bank in view of Sawada and Asai; and (ii)
claim 25 as unpatentable over Bank in view of Sawada and Asai,
as applied to claims 17 through 24, and further in view of
Horino.

6; reply brief filed Apr. 25, 2003, paper 30, p. 1.)
Appeal No. 2003-1684
Application No. 09/508,080

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The decision of the examiner is reversed.
REVERSED

Charles F. Warren )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
Thomas A. Waltz )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
)
Romulo H. Delmendo )
Administrative Patent Judge )

RHD/kis
Appeal No. 2003-1684
Application No. 09/508,080

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