Ex parte BUJANOWSKI et al.

Board of Patent Appeals and Interferences

Jul 7, 1998

08063206 (B.P.A.I. Jul. 7, 1998)

Application for patent filed May 18, 1993.1
-1-
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journal and (2) is not binding precedent of the Board.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. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte VALERIE J. BUJANOWSKI, SHEDRIC O. GLOVER,
SUSAN V. PERZ, MARIS J. ZIEMELIS, GARY R. HOMAN
and MICHAEL W. SKINNER
________________
Appeal No. 95-3933
Application No. 08/063,2061
________________
ON BRIEF
________________
Before KIMLIN, JOHN D. SMITH and WALTZ, Administrative Patent
Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-3, 23
and 26-29. Claims 5-13, 24 and 30-36 stand withdrawn from
consideration. Claim 4, the only other claim remaining in the
Appeal No. 95-3933
Application No. 08/063,206
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present application, has been allowed by the examiner. Claim 1
is illustrative:
1. A method of making a vinylether functional siloxane, the
method comprising the steps of:
(I) reacting:
(a) a silane having the formula R Si(OR ) ;x 4-x1
(b) water; and
(c) an acidic condensation catalyst, wherein R is a
monovalent hydrocarbon or halohydrocarbon radical having from 1
to 20 carbon atoms, R is a monovalent alkyl radical having from1
1 to 8 carbon atoms, x has a value of from 0 to 3, with the
proviso that the molar ratio of water to alkoxy radicals is less
than 0.5;
(II) removing alcohol from the reaction mixture of (I);
(III) neutralizing the mixture of (II);
(IV) adding a vinyl ether compound having the formula
HOR OCH=CH wherein R is a divalent hydrocarbon or2 22
halohydrocarbon radical having from 1 to 20 carbon atoms to the
mixture of (III);
(V) adding a transesterification catalyst to the mixture of
(IV);
(VI) removing volatiles from the mixture of (V).
The examiner relies upon the following references as
evidence of obviousness:
Burzynski et al. (Burzynski) 4,539,232 Sep. 3, 1985
Brown et al. (Brown) 5,270,423 Dec. 14, 1993
(filed Nov. 13, 1992)
Appeal No. 95-3933
Application No. 08/063,206
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Appellants' claimed invention is directed to a method of
making a vinylether functional siloxane comprising the recited steps.
Appealed claims 1-3, 23 and 26-29 stand rejected under
35 U.S.C. § 103 as being unpatentable over Brown in view of
Burzynski.
Upon careful review of the opposing arguments presented on
appeal, we will not sustain the examiner's rejection.
The threshold issue on appeal is the effectiveness of
appellants' affidavit under 37 CFR § 1.131, dated
November 21, 1994, in removing Brown as a prior art reference.
It is the examiner's position that the affidavit does not
effectively remove Brown as a prior art reference because the
affidavit shows a reduction to practice of claimed step (I) with
alcohol as an additional reactant. According to the examiner,
"[t]here is no evidence in the Affidavit that a method comprising
a reaction of components a, b and c recited in step (I) of claim
1 without the addition of an alcohol was reduced to practice
before the Brown et al[.] effective date" (page 7 of Answer).
The examiner's reasoning is not on sound legal footing
because it is well settled that an applicant need prove priority
of invention of only that portion of his claimed invention that
Appeal No. 95-3933
Application No. 08/063,206
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is disclosed, or rendered obvious, by the applied reference.
In re Stempel, 241 F.2d 755, 759, 113 USPQ 77, 81 (CCPA 1957).
In the present case, the examiner expressly acknowledges that
"Brown et al[.] do not teach reacting an alkoxy silane with water
in the presence of an acidic condensation catalayst [sic], as
recited in step (I) of instant claim 1" (page 3 of Answer).
Since the examiner relies on Brown for claimed steps (IV)-(VI),
and makes no argument that the Rule 131 Affidavit does not show
reduction to practice of claimed steps (IV)-(VI) prior to the
effective date of Brown, it can be seen that the Affidavit
establishes priority of invention for that portion of the
presently claimed invention that is disclosed by Brown.
Also, based on the Burzynski disclosure, we find that
claimed steps (I)-(III), not requiring alcohol as a reactant,
would have been an obvious modification of the reaction shown in
the Affidavit to one of ordinary skill in the art. In re
Stempel, 241 F.2d at 759, 113 USPQ at 81; In re Clarke, 356 F.2d
987, 992, 148 USPQ 665, 670 (CCPA 1966).
Since we agree with appellants that the Rule 131 Affidavit
of November 21, 1994, effectively removes the reference to Brown
as prior art, it logically follows that we must reverse the
examiner's rejection under 35 U.S.C. § 103 over Brown in view of
Burzynski.
Appeal No. 95-3933
Application No. 08/063,206
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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 )
)
)
)
JOHN D. SMITH ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
THOMAS A. WALTZ )
Administrative Patent Judge )
Appeal No. 95-3933
Application No. 08/063,206
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Patent Department - Mail C01232
Dow Corning Corp.
Midland, MI 48686-0994