Ex parte CIFUENTES et al.

Board of Patent Appeals and Interferences

Aug 28, 1998

08076615 (B.P.A.I. Aug. 28, 1998)

Application for patent filed June 11, 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journal and (2) is not binding precedent of the Board.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 MARTIN E. CIFUENTES, WILLIAM P. BRADY,
RANDALL G. SCHMIDT, WILLIAM J. SCHOENHERR, MICHAEL R. STRONG, BERNARD
VANWERT and GARY A. VINCENT
__________
Appeal No. 95-1496
Application No. 08/076,6151
__________
ON BRIEF
__________
Before JOHN D. SMITH, SCHAFER and WEIFFENBACH, Administrative Patent Judges.
SCHAFER, Administrative Patent Judge.
DECISION ON APPEAL
Applicants appeal from the rejection of claims 1 to 21, all the claims in the application.
Appeal No. 95-1496
Application No. 08/076,615
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We have jurisdiction by virtue of 35 U.S.C. § 134.
We reverse.
The examiner relies on the following references in rejecting the claims:
Merrill U.S. Patent 4,753,977 Jun. 28, 1988
Hardman et al. (Hardman), “Silicones,” reprinted from Encyclopedia of Polymer Science
and Engineering, Vol. 15, Second Ed. (1989) pp. 218-219.
The examiner asserts three rejections:
1. The subject matter of claims 1-5 is rejected under 35 U.S.C. § 102(b) or, in the alternative,
under § 103 as unpatentable over Merrill;
2. The subject matter of claims 6-9 and 17-19 is rejected under 35 U.S.C. § 103 as
unpatentable over Merrill; and
3. The subject matter of claims 10-16, 20 and 21 is rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Merrill and Hardman.
In the answer, the examiner also refers to
Chung U.S. Patent 4,515,932 May 7, 1985
The Chung disclosure is incorporated by reference into the Merrill disclosure. Merrill, col. 3, lines 55-57.
The subject matter of the claimed invention relates to a moisture-curable hot melt pressure-sensitive
adhesive composition. Claim 1 is representative:
1. A moisture-curable silicone hot melt pressure-sensitive adhesive
composition comprising:
(i) a solid hydroxyl-functional organopolysiloxane resin comprising R SiO3 l/2
siloxane units and SiO siloxane units, wherein the mole ratio of the R SiO4/2 3 l/2
siloxane units to SiO siloxane units has a value of from 0.5/1 to 1.2/1, R is4/2
selected from the group consisting of hydrocarbon radicals and halogenated
hydrocarbon radicals and said hydroxyl content is 1.2 to 6 percent by weight;
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Application No. 08/076,615
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(ii) a diorganopolysiloxane polymer, each terminal group thereof containing
at least two silicon-bonded alkoxy radicals having 1-4 carbon atoms, said polymer
having a viscosity at 25°C of 20 to <100,000 centipoise, and the weight ratio of
said resin to said polymer being in the range 40:60 to 80:20;
(iii) a silane of the formula R’ SiX , in which R’ is selected from the group4-y y
consisting of hydrocarbon radicals and substituted hydrocarbon radicals having 1-
6 carbon atoms, X is a hydrolyzable group and y is 2 to 4, the amount of said
silane being sufficient to provide stability to said composition; and
(iv) sufficient catalyst to accelerate the cure of said composition, said
composition being an essentially solvent-free, non-slump solid at room temperature
which cures to an essentially non-tacky elastomer upon exposure to moisture.
Applicants’ Brief, p. 12.
As can be seen from the claim, the composition must include four components: (i) a solid hydroxyl-
functional organopolysiloxane resin; (ii) a diorganopolysiloxane polymer; (iii) a silane; and (iv) a catalyst.
Applicants define the diorganopolysiloxane polymer (component (ii)) as follows:
The repeat units of the diorganopolysiloxane (ii) are R SiO siloxy units wherein2 2/2
R is independently selected from the same hydrocarbon and halogenated
hydrocarbon radicals delineated above for component (i).
Specification, p. 9. Applicants define “R” to be limited to hydrocarbon or halogenated hydrocarbon.
Thus, their specification says R is
a monovalent radical selected from the group consisting of hydrocarbon and
halogenated hydrocarbon radicals, preferably having less than 20 carbon atoms,
and most preferably having from 1 to 10 carbon atoms. Examples of suitable R
radicals include alkyl radicals, such as methyl, ethyl, propyl, pentyl, octyl, undecyl
and octadecyl; cycloaliphatic radicals, such as cyclohexyl; aryl radicals such as
phenyl, tolyl, xylyl, benzyl, alpha-methyl styryl and 2-phenylethyl; alkenyl radicals
such as vinyl; and chlorinated hydrocarbon radicals such as 3-chloropropyl and
dichlorophenyl.
Specification, p. 6.
Appeal No. 95-1496
Application No. 08/076,615
Our disposition of the case does not require the discussion of the Hardman reference.2
4
Merrill relates to a composition which is said to provide a water repellant and stain resistant2
coating. Merrill teaches a composition having three required components:
(a) organopolysiloxane resin;
(b) an alkylalkoxypolysiloxane resin; and
(c) a condensation catalyst.
Merrill, col. 2, line 52 - col. 3, line 1. Optionally, a fourth component may be included --an alkoxy
crosslinking agent. Merrill, col. 3, lines 2-3. Merrill defines the repeating units of the
alkylalkoxypolysiloxane resin (component (b)) as follows:
Alkyl-alkoxypolysiloxane resins contemplated for use in the present invention
contain units of the general formula:
R Si(OR ) Om n (4 - m - n)/21
where m is 0, 1 or 2; n is 1, 2 or 3; m+n is 1, 2 or 3; R is a substituted or1
unsubstituted condensable hydrocarbon radical of from 1 to 6 carbon atoms,
preferably methyl; R is a substituted or unsubstituted monovalent hydrocarbon
radical of from 1 to 8 carbon atoms preferably methyl; and fewer than 20% by
number of all siloxane units are SiO units.2
Merrill, col. 3, lines 35-47.
All of the rejections are dependant upon the examiner’s finding that Merrill’s alkyl-
alkoxypolysiloxane resin (component (b)) describes applicants’ diorganopolysiloxane polymer (component
(ii)). The examiner finds:
Merrill teaches [a] water repellant [composition] for masonry which comprises,
. . . , an alkyl-alkoxypolysiloxane as shown on column 3, line 63 . . . .
Examiner’s Answer, p. 2. However, applicants’ and Merrill’s respective definitions of the repeating units
of diorganopolysiloxane polymer and alkyl-alkoxypolysiloxane resin precludes a finding that these
components are the same. As we indicated above, applicants define the repeating units of the
Appeal No. 95-1496
Application No. 08/076,615
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diorganopolysiloxane polymer as R SiO siloxy units. Specification, p. 9. R is defined as hydrocarbon2 2/2
or halogenated hydrocarbon. Specification, p. 6. On the other hand, Merrill defines the repeating units
of the alkylalkoxypolysiloxane resin as R Si(OR ) O . Merrill, col. 3, lines 35-47. In Merrill’sm n (4 - m - n)/21
formula “n” is defined as 1, 2, or 3. Merrill, col. 3, lines 41. Thus, Merrill’s definition requires the
presence of at least one alkoxy (OR ) group. Applicants’ definition of their diorganopolysiloxane polymers1
does not allow the presence of an (OR ) group. R in applicants’ diorganopolysiloxane polymers is limited1
to hydrocarbon or halogenated hydrocarbon. Therefore, we find that Merrill does not teach applicants’
component (ii). Since the rejection of all claims is dependent on the examiner’s finding that Merrill teaches
diorganopolysiloxane polymers within the scope of applicants’ claims, we reverse the rejections of claims
1 to 21.
REVERSED
JOHN D. SMITH )
Administrative Patent Judge )
)
)
)
RICHARD E. SCHAFER ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
CAMERON WEIFFENBACH )
Administrative Patent Judge )
Appeal No. 95-1496
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