Ex parte HALUSKA - Page 7




          Appeal No. 1996-3816                                       Page 7           
          Application No. 08/293,331                                                  

          to thereby obtain the coated product which is the subject of                
          the appealed                                                                




          claims.  According to appellant's specification, the silica                 
          coating does not have essentially any Si-H bonds (appellant's               
          specification, Example 1).                                                  
               Mine claims a method of forming a film (coating) by                    
          providing a film of a hydrogen silsesquioxane resin on a                    
          substrate using a solvent solution, removing the solvent, and               
          heating the resin film in an inert atmosphere to a temperature              
          of between 250 up to, but not including, 500°C to reduce                    
          hydrogen in the film to less than 80% of that in the resin                  
          used (Mine, claims 1 and 2).  An electrical device such as a                
          semiconductor may be used as the substrate to be coated in the              
          claimed process of Mine (claim 4).                                          
               In view of the above, and a comparison of the claims of                
          Mine and the appealed claims, we agree with the examiner that               
          the product of the appealed claims encompasses and would have               
          been prima facie obvious from the product produced by carrying              
          out the claimed process of Mine.  Compare In re Best, 562 F.2d              








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