Ex parte MITCHELL et al.

Board of Patent Appeals and Interferences

May 27, 1998

07669125 - (D) (B.P.A.I. May. 27, 1998)

Application for patent filed March 14, 1991.1
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journal and (2) is not binding precedent of the Board.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. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte TYRONE D. MITCHELL,
STUART R. KERR III,
and MARK W. DAVIS
_____________
Appeal No. 95-4033
Application 07/669,1251
______________
ON BRIEF
_______________
Before JOHN D. SMITH, WEIFFENBACH and OWENS, Administrative Patent Judges.
WEIFFENBACH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the decision of the examiner refusing to
Appeal No. 95-4033
Application 07/669,125
The rejection as set forth in the final rejection included two additional references: Dziark et al. (Patent No.2
4,395,507) and Smith, Jr. et al. (Patent No. 4,308,372). According to the examiner, the rejections based on Dziark or Smith
(Patent No. 4,308,372) in view of Mitchell have been withdrawn (answer: p. 6) leaving only the rejection as stated in this
decision for our consideration.
2
allow claims 1-37 which are all of the claims in the application. We reverse.
The Claimed Subject Matter
The subject matter on appeal is directed to a multilayered laminate. Claim 1 is representative of
the claimed subject matter and is appended to this opinion.
Prior Art References
The following prior art references are relied upon by the examiner in support of the rejection of the
claims for obviousness:
Smith, Jr. et al. (Smith) 4,273,698 Jun. 16, 1981
Mitchell 4,764,560 Aug. 16, 1988

The Rejection
Claims 1-37 stand rejected under 35 U.S.C. § 103 as being unpatentable over Smith in view of
Mitchell.2
Opinion
We have carefully considered the entire record in light of the respective positions advanced by
appellants and by the examiner. In doing so, we will not sustain the rejection of the claims for obviousness.
Appeal No. 95-4033
Application 07/669,125
3
It is well settled that the examiner has the initial burden of establishing a prima facie case of
obviousness. 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). This burden can be satisfied when
the examiner provides objective evidence that some teaching or suggestion in the applied prior art, or
knowledge generally available, would have led one of ordinary skill in the art to combine the teachings of
the references and to produce the claimed subject matter. In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d
1596, 1598 (Fed. Cir. 1988).
The claims are directed to a multilayered laminate comprising a first and third layers of plastic, metal
or glass; a second layer between the first and third layers comprising a curable silicone adhesive
composition which will bond in the absence of a primer to the first and third layers. The claimed silicone
composition comprises a vinyl-containing polydiorganosiloxane, a hydrogen containing polysiloxane, a
catalytic amount of a hydrosilation catalyst, and an effective amount of an adhesion promoter.
Smith is directed to a self-bonding silicone adhesive composition comprising a silanol-terminated
diorganopolysiloxane, an adhesion promoter such as that claimed by appellants, and a hydrogen-containing
polysiloxane (col. 2, lines 29-44; col. 5, line 61 to col. 6, line 68; col. 8, line 43 to col. 9, line 10; col. 11,
lines 8-20). The examiner concedes that Smith does not disclose a vinyl-containing diorganosiloxane
polymer composition and relies on Mitchell to show that such a polymer composition is known in the art.
Mitchell discloses preparing a film comprising an interpenetrating polymer network comprising
Appeal No. 95-4033
Application 07/669,125
4
polytetrafluoroethylene and a curable polysiloxane composition comprising a vinyl-containing
polydiorganosiloxane, an organohydrogen-polysiloxane crosslinking agent, a hydrosilation catalyst (a
precious metal containing catalyst), and an adhesion promoter such as the maleate or fumarate functional
silanes disclosed by Smith (col. 4, line 5 to col. 5, line 1). The examiner concludes that “[i]t would have
been obvious to one having ordinary skill in the art at the time the invention was made to replace a self-
curable silicon [sic, silicone] composition of Smith <698 by self-bonding compositions of Mitchell <407,
since it was known in the art that a composition containing vinyl-containing polydiorganosiloxanes[,]
hydrogen-containing polysiloxanes, and a catalytic amount of a hydrosilation catalyst are self-bonding
compositions and have improved adhesive properties” (answer: p. 5).
On this record, the examiner has not provided cogent reasons as to why it would have been
obvious to one of ordinary skill in the art to arrive at the claimed laminate from the combined teachings of
Smith and Mitchell. The examiner has not provided any analysis and rationale to explain how a person
having ordinary skill in the art would have been motivated by the combined teachings of the prior art to
substitute Mitchell’s vinyl-containing diorganosiloxane polymer composition for Smith’s silanol-terminated
diorganopolysiloxane polymer composition. Mitchell does not disclose that his vinyl-containing
diorganosiloxane polymer composition is a self-bonding adhesive, let alone that the composition can be
used without polytetrafluoroethylene as an adhesive to bond layers of plastic, metal and/or glass without
the use of a primer. The examiner relies on the “improved adhesive properties” of the Mitchell composition
Appeal No. 95-4033
Application 07/669,125
5
as a basis for obviousness. However, the examiner has not pointed to any data in the references which
compares the adhesive properties of the vinyl-containing polydiorganosiloxane composition of Mitchell to
the silanol-terminated diorganopolysiloxane of Smith to show that Mitchell’s composition has “improved”
adhesive properties over Smith’s composition.
Even if a suggestion to substitute the compositions did flow from the prior art, neither Smith nor
Mitchell teach or suggest the basic three layered laminate defined by appellants’ claims. The examiner
concedes that Smith “does not specifically mention that multilayered laminates comprising a self-bonding
silicon [sic, silicone] compositions [sic, composition] may be formed” (answer: p. 4). Mitchell is directed
to an film comprising an interpenetrating polymer network of polytetrafluoroethylene and a
polydiorganosiloxane having vinyl unsaturation on monofunctional siloxane units (col. 3, lines 55-67; col.
4, lines 5-57). The examiner does not point to any portion of the Mitchell disclosure which would disclose
or suggest a multilayered laminate as set forth in appellants’ claims. The examiner has simply failed to
explain how one having ordinary skill in the art would have been led to the claimed multilayered laminate
comprising a curable silicone adhesive between layers of plastic, metal and/or glass.
Appeal No. 95-4033
Application 07/669,125
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For the reasons given above, we find that the examiner has not established a prima facie case of
obviousness over the combined teachings of Smith and Mitchell. Accordingly, the decision of the examiner
is reversed.
REVERSED
JOHN D. SMITH . )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CAMERON WEIFFENBACH ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
TERRY J. OWENS )
Administrative Patent Judge )
Appeal No. 95-4033
Application 07/669,125
7
LI-HUA LUO
GENERAL ELECTRIC COMPANY
ONE PLASTICS AVENUE
PITTSFIELD, MASS. 01201
Appeal No. 95-4033
Application 07/669,125
1
1. A multilayered laminate comprising at least three layers and having improved peel strength,
comprising:
(1) a first layer, comprising a material selected from:
(a) plastic meterials selected from polyphenylene/styrene blends, polyacrylamides,
polystyrenes, conditioned polycarbonates, polyesters, polyimides, polybutylene terephthalates,
and polyetherimides;
(b) metal materials selected from alclad aluminum, anodized aluminum, galvanized steel, cold-
rolled steel, cast aluminum, and cast magnesium, and copper; and
(c) glass materials;
(2) a second layer comprising an addition curable silicone adhesive composition directly bonded
to the first layer in the absence of a primer, the composition comprising by weight:
(A) 100 parts of a vinyl-containing polydiorganosiloxane composition comprising:
(a) from about 50 to about 100 parts by weight of an essentially cyclic-free vinyl-terminated
polydiorganosiloxane having the general formula
(I)
R ViSiO(R SiO) (RViSiO) SiR Vi2 2 m n 2
wherein Vi represents a vinyl radical, R is selected from the class consisting of alkyl radicals
of 1 to 8 carbon atoms, phenyl radicals, fluoroalkyl radicals of 3 to 10 carbon atoms and
mixtures thereof, wherein “m+n” is a number sufficient to provide a viscosity of 100 to about
100,000 centipoise at 25 C, the vinyl content of the polydiorgano-siloxane being from aboutO
0.02 to about 2.0 weight %, and
(b) from about 0 to about 50 parts by weight of a solid, benzene-soluble vinyl-
containing resin copolymer comprising
R SiO units and SiO units13 1/2 4/2
Appeal No. 95-4033
Application 07/669,125
2
Appeal No. 95-4033
Application 07/669,125
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wherein each R is a vinyl radical or a monovalent hydrocarbon radical free of aliphatic1
unsaturation and containing no more than six carbon atoms, the ratio of R SiO units to13 1/2
SiO units from about 0.5:1 to about 1.5:1, the resin having a vinyl content of from about 1.54/2
to about 3.5% by weight;
(B) a hydrogen-containing polysiloxane having an average unit formula
(II)
R H SiO ,2a b (4-a-b)/2
wherein R is a monovalent hydrocarbon radical or halogenated monovalent hydrocarbon2
radical having from 1 to about 10 carbon atoms and free of aliphatic unsaturation, “a” is a value
of from about 0 to about 3, “b” is a value of from about 0 to about 3, and the sum of “a” + “b”
is from 0 to 3, there being at least two silicon-bonded hydrogen atoms per molecule; the
polysiloxane being present in an amount sufficient to provide a molar ratio of silicon-bonded
hydrogen atoms in (B) to olefinically unsaturated radicals in (A) of from about 0.75:1 to about
25:1;
(C) a catalytic amount of a hydrosilation catalyst;
(D) an effective amount of an adhesion promoter selected from the group
consisting of
(i) bis[3-(trimethoxysilyl)alkyl]fumarates having the general formula:
(III)
O
1
HC C O R Si(OR ) $$$$$$$$ $$$$$$$ $$$$$$$$ 3 $$$$$$$$ 4 3
O
1 4
(R O) Si R O C CH4 $$$$$$$$$ 3 $$$$$$$$$ $$$$$$$$$ $$$$$$$$$ 3
Appeal No. 95-4033
Application 07/669,125
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Appeal No. 95-4033
Application 07/669,125
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(ii) bis[3-(trimethoxysilyl)alkyl]maleates having the general formula:
(IV)
O
2
CH C O R Si(OR ) $$$$$$$$ $$$$$$$ $$$$$$$$$ 3 $$$$$$ 4 3
3
CH C O R Si(OR ) $$$$$$$$ $$$$$$$ $$$$$$$$$ 3 $$$$$$ 4 3

3
O
(iii) mixtures of (i) and (ii);
(iv) allyl-[3-(trimethoxysilyl)alkyl]maleates having the general formula
(V)
O
2
CH C O R Si(OR ) $$$$$$$$ $$$$$$$ $$$$$$$$$ 3 $$$$$$ 4 3
3
CH C O R $$$$$$$$ $$$$$$$ $$$$$$$$$ 5
2
O
Appeal No. 95-4033
Application 07/669,125
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(v) allyl-[3-(trimethoxysilyl)alkyl]fumarates having the general formula
(VI)
O
1
HC C O R Si(OR ) $$$$$$$$ $$$$$$$ $$$$$$$$ 3 $$$$$$$$ 4 3

4
R O C CH5 $$$$$$$$$ $$$$$$$$$ $$$$$$$$$
1
O
and
(vi) N-[3-(trimethoxysilyl)alkyl]maleimides having the general formula
(VII)
wherein R , R , and R are each alkyl radicals of 1 to about 8 carbon atoms; and3 4 5
(E) from about 0 to about 200 parts of an extending filler; and
Appeal No. 95-4033
Application 07/669,125
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(F) from about 0 to about 50 parts of a reinforcing filler; and
(3) a third layer, to which is directly bonded in the absence of a primer the addition curable silicone
adhesive composition of (2), the third layer comprising a material selected from:
(a) plastic materials selected from polyphenylene/styrene blends, polyacrylamides,
polystyrenes, conditioned polycarbonates, polyesters, polyimides, polybutylene terephthalates,
and polyetherimides;
(b) metal materials selected from alclad aluminum, anodized aluminum, galvanized steel, cold-
rolled steel, cast aluminum, and cast magnesium, and copper; and
(c) glass materials.