Appeal No. 1999-2534
Application No. 08/577,915
The examiner’s rationale and Appellants’ argument
The examiner urges that the absence of teachings of silaceous materials reacted
with urethanes to remove free isocyanate groups in Doerer is made up by the teachings
of Usifer regarding the addition of organofunctional silanes to urethane polymer
compositions to promote adhesion to various substrates, including foams, and by the
teachings of Berger, which teaches reacting urethanes with silanes to transform some
or all of the isocyanate groups. (Answer at 5–8.)
Appellants urge that the references are not properly combinable. Appellants
argue that Usifer relates to UV-curable adhesives, and that there is no motivation to
combine the silanes taught by Usifer with the heat-cured urethane resins taught by
Doerer. (Brief at 6–8.) Appellants also argue that Berger relates to moisture-curable
adhesives and caulks, and that, again, there is no motivation to modify the urethanes of
Doerer in the manner taught by Berger. (Id. at 8–9.) Appellants urge that even if a
prima facie case of obviousness has been established, the declaration of filed by co-
inventor William Humphrey (Paper No. 13, June 1, 1998) shows that the compositions
of Usifer are inoperable in the claimed process because they are too viscous to be
impregnating compositions. (Brief at 10.)
We refer the reader to the examiner’s answer and to Appellants’ Brief and Reply
Brief for the full exposition of their respective positions.
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