Appeal No. 2000-1804
Application 08/668,598
1780, 1783-84 n.14 (Fed. Cir. 1992), citing In re Gordon, 733 F.2d 900, 902, 221 USPQ
1125, 1127 (Fed. Cir. 1984).
It is not in dispute that the organosilsesquioxane polymer as claimed in the
method claims is disclosed in Bagley (column 2, lines 18-41) as suitable for use as a
coating/cladding for an optical fiber which is silica or silica-based, a chalcogenide, or a
light or heavy metal halides (column 2, lines 56-61). The coating is effective as a water
barrier at high temperatures and humidity (column 1, lines 25-27 and 65-67).
Nor is it in dispute that the secondary references teach that aqueous solutions
including alkylalkoxysilanes impart water repellent properties when applied to wood,
concrete, mortar and stone. (See, e.g. Cuthbert, column 4, lines 46-49; Stark-Kasley,
column 1, lines 45-51).
However, the Examiner and the Appellant disagree on whether the art can be
combined; and, if combined, whether one of skill in the art would have a reasonable
expectation of success.
The Examiner is of the opinion that the water repellent coatings of the prior art
are:
...from the same “family” of polymers and one skilled in the art would have been
suggested to look elsewhere in this “family” for other polymers which would also
be applicable to wooden surfaces. In addition, the primary reference teaches the
claimed coating composition on a glass surface, one skilled in the art would have
an expected success for coating a wooden surface since the wooden surface is
porous and rough compared to that of a glass fiber. Furthermore, the prior art
and Appellant’s own disclosure teach that the claimed polymer coating can be
derived from alkyltriethoxysilanes which are similar to those described in the
secondary references. (Examiner’s Answer, page 9, line 14 - page 10, line 2).
The Appellant, on the other hand, states in the Rule 132 Declaration of record
that:
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